Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Brian Stephens
Claim Number: FA2002001883244
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 Brian Stephens (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersirelands.com>, registered with NameSilo, LLC.
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.
Complainant submitted a Complaint to the Forum electronically on February 13, 2020; the Forum received payment on February 13, 2020.
On February 14, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersirelands.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 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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@skechersirelands.com. Also on February 18, 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 3, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that its footwear products are sold in more than 170 countries and territories around the world including Ireland in over 3,300 Skechers retail stores, department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide including on its own website at <www.skechers.com>.
Complainant relies on its rights in the SKECHERS trademark arising from its ownership of its portfolio of trademark registrations described below and claims rights in the goodwill that it has acquired by the extensive international use of its SKECHERS trademark primarily in connection with the goods footwear and apparel and related retail services and has been using the SKECHERS mark in connection with the relevant goods since 1993.
Complainant submits that the disputed domain name <skechersirelands.com> is confusingly similar to Complainant’s SKECHERS mark because it includes the SKECHERS mark in its entirety, adding the plural form of the country name “Irelands”, and the generic top-level domain (gTLD) <.com>. Complainant submits that the addition of a geographic term to Complainant's SKECHERS mark does not remove the disputed domain from the realm of confusing similarity. See, Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.").
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <skechersirelands.com>, alleging that Respondent registered the <skechersirelands.com> domain name on May 22, 2019, long after Complainant registered the SKECHERS mark and long after Complainant began using the SKECHERS mark. Complainant asserts that the SKECHERS mark is an arbitrary term which has no meaning other than to identify Complainant as a source of Complainant's products. Complainant states 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 refers to the WhoIs information published in respect of the disputed domain name identifies Respondent as the registrant and there is no other evidence in the record to suggest that the Respondent has been commonly known by the <skechersirelands.com> domain name.
Complainant submits that the disputed domain name was registered and is being used in bad faith, alleging that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term “skechersirelands” on its own.
Complainant submits that the very nature of Respondent's registration of the <skechersirelands.com> domain name evidences bad faith. The fact that Respondent chose to register an exact reproduction of Complainant's SKECHERS mark in the gTLD <.com> and is using the website to sell SKECHERS branded shoes indicates that Respondent had knowledge of Complainant and Complainant's business. Complainant submits that it follows that Respondent knowingly registered the disputed domain name to capitalize on consumer recognition of the SKECHERS mark.
Complainant adds that as its SKECHERS trademark was registered in 1994, well before Respondent's registration of the <skechersirelands.com> domain name in 2019, Respondent had at least constructive knowledge of Complainant's rights in its mark at the time the domain was registered.
Complainant refers to a screenshot of the website to which the disputed domain name resolves, which is adduced in evidence in an annex to the Complaint, and which prominently displays the SKECHERS trademark along with photographs of footwear which Complainant submits are “suspected counterfeit SKECHERS-branded products”. Complainant alleges that Respondent is using the SKECHERS trademark on its website to sell suspected counterfeit Skechers products that compete directly with Complainant's business. As a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent's website are genuine Skechers products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant designs, produces and markets footwear and apparel and provides related retail services. Complainant has been publicly traded on the New York Stock Exchange under the symbol SKX since 1999 and is the owner of a portfolio of trademark registrations for its SKECHERS mark including and registration thereof in the United States, among others including:
· United States registered trademark SKECHERS, registration number 1,851,97Z, registered on the Principal Register on August 30, 1994 for goods in international class 25; and
· Irish Registered Trade Mark SKECHERS, registration number 157077, registered on September 15, 1993 for goods in class 25.
Complainant has an established Internet presence and maintains a website at <www.skechers.com> on which it promotes and offers its goods and services.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name in the course of this proceeding.
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”).
Complainant has adduced convincing, uncontested evidence of its rights in the SKECHERS mark acquired though its abovementioned trademark registrations and its international reputation and extensive use of the mark on its footwear, apparel and related services.
The disputed domain name consists of Complainant’s SKECHERS mark in its entirety in combination with the word “Irelands” and the gTLD extension <.com>. Complainant’ mark is the initial, dominant and in the context only distinctive element of the disputed domain name. The word “Irelands” references the country Ireland and given the global reach of Complainant’s reputation, does not serve to distinguish the disputed domain name from Complainant’s name, reputation and mark in any way. In the circumstances of this Complaint, the gTLD <.com> extension is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the SKECHERS trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name <skechersirelands.com>, alleging that the WhoIs information published in respect of the disputed domain name shows that Respondent is not commonly known by the disputed domain name; that there is nothing in the record to show that Respondent is commonly known by the disputed domain name; that 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; that Respondent registered the <skechersirelands.com> domain name on May 22, 2019, long after Complainant registered the SKECHERS mark and long after Complainant began using the SKECHERS mark; that because the SKECHERS mark is an arbitrary term which has no meaning outside its use by Complainant as a trademark, it is improbable that the disputed domain name was registered for a bona fide non-commercial purpose.
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 a respondent must actually be offering the goods or services at issue and must use the website to which the disputed domain name resolves to sell only the trademarked goods; that the site must accurately disclose the registrant's relationship with the trademark owner; and that 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 purports to offer genuine SKECHERS branded goods and prominently displays Complainant’s mark without license or authority. The text and other content however misrepresent to the public 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 these allegations of Complainant. In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles.
It is well established that if Complainant makes out a prima facie case, 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).
Because SKECHERS is a distinctive and arbitrary term, with no meaning other than as Complainant’s trademark, Complainant has an extensive international reputation and statutory rights in the SKECHERS mark which long predate the registration of the disputed domain name, and the disputed domain name is being used to purport to offer SKECHERS branded goods for sale, this Panel finds that on the balance of probability the disputed domain name was registered in bad faith to take predatory advantage of Complainant’s name, mark and reputation.
Complainant has alleged but not provided any evidence that Respondent is offering counterfeit goods for sale and so this Panel makes no finding in that regard.
This Panel finds however that the disputed domain name is being used in bad faith. The website to which the disputed domain name resolves purports to offer SKECHERS branded footwear at half-price. Complainant’s SKECHERS trademark is prominently displayed on the banner across the top of the home page and creates the misleading and untrue impression that the website is owned, authorized by or licensed by Complainant.
This Panel finds therefore that on the balance of probabilities, 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 is therefore using the disputed domain name in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in had faith. Complainant has therefore succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is accordingly entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersirelands.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 12, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page