DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Andrew Garvey

Claim Number: FA2002001883060

 

PARTIES

Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A. Lerner of Kleinberg & Lerner, LLP, California, USA.  Respondent is Andrew Garvey (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skecherswebshop.com>, registered with NameSilo, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 12, 2020.

 

On February 13, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skecherswebshop.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 13, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@skecherswebshop.com.  Also on February 13, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On March 6, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the SKECHERS mark, relying on its portfolio of trademark registrations listed below and the goodwill it has established by its use of the trademark in its footwear business for over 25 years. Complainant asserts that it has grown to become a multi-billion-dollar business with products sold in more than 170 countries and territories around the world in over 3,300 SKECHERS retail stores, department stores, specialty stores, athletic specialty shoe stores, independent retailers, and Internet retailers worldwide as well as through Complainant’s own website at <www.skechers.com>.

 

Complainant submits that the disputed <skecherswebshop.com> domain name is confusingly similar to Complainant’s SKECHERS mark because the domain name includes the SKECHERS mark in its entirety, adding the generic terms “web” and “shop”, and the top-level domain name (gTLD) <.com> extension.

 

Complainant argues that the  generic terms are insufficient to avoid a finding of confusing similarity. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as “the addition of the generic term ‘real’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.”)

 

Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <skecherswebshop.com> alleging that there is no evidence in the record to suggest that Respondent is commonly known by the disputed domain name and the Registrar’s WHOIS information identifies Respondent as the registrant. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a/ Electromatic Equip't" as the registrant and no other evidence in the record suggests that Respondent was commonly known by the domain names in dispute).

 

Complainant adds that upon information and belief, Respondent is not a licensee, authorized retailer, or distributor of Complainant's products, nor is Respondent otherwise authorized to use the name or the SKECHERS trademark for any purpose.

 

Complainant submits that the disputed domain name was registered in bad faith arguing that Respondent registered the <skecherswebshop.com> domain name on July 21, 2019, long after Complainant began using and registered the SKECHERS mark. Complainant states that the SKECHERS mark is an arbitrary term which has no meaning outside its use as Complainant’s trademark.

 

Complainant asserts moreover that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on his own and argues that this factor alone weighs in favor of finding bad faith against Respondent. See, Neuberger Berman, Inc., No. D2000-0323 (WIPO Nov. 2, 2000) (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith).

 

Complainant argues that Respondent had at least constructive knowledge of Complainant's rights in its mark at the time the disputed domain name was registered and adds that the fact that Respondent chose to register an exact reproduction of Complainant's SKECHERS mark in the <.com> gTLD and is using the website to sell SKECHERS branded shoes indicates that Respondent had actual knowledge of Complainant and Complainant's business.

 

Complainant submits that the disputed domain name is being used in had faith and has adduced in evidence annexed to the Complaint, a screenshot of the website to which the disputed domain name resolves which prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. Complainant argues that Respondent is therefore using the disputed domain name which is confusingly similar to Complainant’s well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant produces and sells lifestyle and performance footwear and is the owner of a large portfolio of trademark registrations for the SKECHERS mark in jurisdictions across the world including United States trademark registration SKECHERS, registration number 1,851,977, registered on August 30, 1994 on the Principal Register for goods in international class 25.

 

Complainant markets it footwear products under the SKECHERS mark including through its website at <www.skechers.com>.

 

The disputed domain name was registered on July 21, 2019 and resolves to a website in English and another language that purports to offer SKECHERS brand footwear at half price. The products are priced in Hungarian Forint.

 

There is no information available about Respondent except for that provided in the Compliant, the Registrar’s Whois and the Registrar’s response to the Forum’s request for details of the registration of the disputed domain name in the course of this proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant has shown in uncontested evidence that it has rights in the SKECHERS mark established by its ownership of the abovementioned portfolio of trademark registrations and extensive use of the mark in its international footwear business.

 

The disputed domain name <skecherswebshop.com> consists of Complainant’s SKECHERS mark in its entirety in combination with the generic terms “web” and “shop”, and the top-level domain name (gTLD) <.com> extension. The SKECHERS mark is the initial, dominant and only distinctive element of the disputed domain name and has Complainant argued that the addition of generic terms is insufficient to avoid a finding of confusing similarity. In the context of the present Complaint the gTLD  <.com> extension may be ignored as it is only a technical necessity.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the SKECHERS mark in which Complainant has rights. Policy ¶ 4(a)(i)

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name <skecherswebshop.com> alleging that the Registrar’s WHOIS information identifies Respondent as the registrant and there is no other evidence in the record to suggest that Respondent was commonly known by the disputed domain name; that Respondent is not a licensee, authorized retailer, or distributor of Complainant's products; that Respondent is not otherwise authorized to use the name or the SKECHERS trademark for any purpose; and that it appears that the disputed domain name is being used as the address of a website to sell counterfeit copies of SKECHERS brand footwear.

 

Complainant has alleged but has not provided any supporting evidence that the goods purported to be offered on Respondent’s website may be counterfeit.

 

Notwithstanding Respondent’s failure to file a Response or provide any defense in this proceeding, it could be argued that Complainant has alleged but has not adduced evidence that Respondent is not a bona fide reseller of Complainant’s goods.

 

Since 2001, the decision in Oki Data Americas, Inc. v. ASD, Inc. Case No. D2001-0903 has provided accepted guidance to panelists as to whether a reseller has rights or legitimate interests in a disputed domain name. In Oki Data the panel decided that to be “bona fide,” the offering must meet several requirement including that the respondent must actually be offering the goods or services at issue; must use the site to sell only the trademarked goods; the site must accurately disclose the registrant's relationship with the trademark owner and the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

 

In this proceeding, the website to which the disputed domain name resolves is in English and another language which unfortunately has not been identified or translated in the Complaint. On the website Respondent purports to offer SKECHERS branded goods and prominently displays Complainant’s mark without license or authority. The text and other content misrepresent to a person who only speaks and understands English that the website is owned by, has a connection with or is endorsed by Complainant and therefore it does not accurately disclose Respondent’s relationship with Complainant. Additionally, Respondent has not responded to Complainant’s allegations. Respondent therefore could not avail of a defense based on the Oki Data principles.

 

In such circumstances it is well established that the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any response to the Complaint and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As SKECHERS is an arbitrary term which has no meaning other than as Complainant’s trademark, it is most improbable that the disputed domain name was chosen and registered for any reason other than because of its reference to Complainant, its products and name. The fact that it is being used as the address of a website to purportedly offer SKECHERS branded shoes for sale adds to the probability that the registrant had knowledge of Complainant and Complainant's business. This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith to take predatory advantage of Complainant’s reputation and goodwill in the SKECHERS mark.

 

The screenshot of the website to which the disputed domain name resolves shows that Complainant’s SKECHERS trademark is prominently displayed along with photographs of suspected counterfeit SKECHERS-branded products. Complainant has not adduced any evidence that the goods on offer are counterfeit and this Panel makes no finding in that regard.

 

The domain name is confusingly similar to Complainant’s mark and the website to which it resolves misleadingly presents itself as being associated with or endorsed by Complainant. The choice of the words “web shop” adds to the likelihood that Internet users will be misdirected and that Complainant’s reputation will be tarnished. In such circumstances, this Panel finds on the evidence adduced, that by using the disputed domain name, Respondent has  intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of his web site and the products purported to be offered on his website.

 

This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. In making this finding this Panel is conscious that Respondent has not filed any Response in this proceeding, particularly addressing the allegations that the goods are counterfeit.

 

As  Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii), it is entitled to the reliefs sought in the Complaint.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <skecherswebshop.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Panelist

Dated:  March 7, 2020

 

 

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