Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Katrin Kuster
Claim Number: FA2003001888650
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, United States of America. Respondent is Katrin Kuster (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechershalvalla.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 March 17, 2020; the Forum received payment on March 17, 2020.
On March 18, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechershalvalla.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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@skechershalvalla.com. Also on March 19, 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 April 9, 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 the SKECHERS mark is used by Complainant’s group on footwear products that are sold in more than 170 countries and territories around the world in department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide and online through its website <www.skechers.com>.
Complainant argues that the disputed domain name <skechershalvalla.com> domain name is confusingly similar to Complainant’s SKECHERS mark because the domain name includes the SKECHERS mark in its entirety, adding the Finnish generic term “halvalla” which translates to “cheap” in English, and the generic top-level domain (gTLD) ".com." The addition of a generic term to Complainant's SKECHERS mark does not remove the disputed domain name from the realm of confusingly similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name <skechershalvalla.com> which was registered on July 19, 2019, long after Complainant registered the SKECHERS mark and long after Complainant began using the SKECHERS mark. Complainant argues that Respondent is not commonly known by the disputed domain name. Namesilo WHOIS information lists "Domain Administrator" as the registrant and there is no other evidence in the record to suggest that the Respondent was commonly known by the <skechershalvalla.com> domain name. 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 submits that the SKECHERS mark is an arbitrary term which has no meaning outside its use as a means to identify Complainant as a source of Complainant's products.
Complainant asserts 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.
Respondent's website prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. A printout of the <skechershalvalla.com> webpage is attached to the Complaint.
Complainant submits that Respondent registered and is using the domain name in bad faith arguing that there is no plausible circumstance under which Respondent could legitimately register or use the disputed domain name. Complainant alleges that the disputed domain name contains an exact reproduction of the well-known SKECHERS mark and was registered to capitalize on consumer recognition of the SKECHERS mark. The fact that Respondent chose to register an exact reproduction of Complainant's SKECHERS mark and is using the website to sell SKECHERS branded footwear indicates that the registrant had knowledge of Complainant and Complainant's business.
Complainant further argues that its SKECHERS trademark received registration in 1994, well before Respondent's registration of the <skechershalvalla.com> domain name in 2019 and the registrant had at least constructive knowledge of Complainant's rights in its mark at the time the domain was registered.
Complainant adds moreover, that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on its own. 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 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 is a wholly owned subsidiary of SKECHERS U.S.A. Inc II, which also has subsidiaries in a number of other jurisdictions including Germany where Respondent is situated. Complainant sells lifestyle and performance footwear and apparel and provides related retail services.
Complainant is the owner of United States registered trademark SKECHERS registration number 1,851,977, registered on August 30, 1994 on the Principal Register for goods in international class25
Complainant claims that its group owns of a large portfolio of trademark registrations for the SKECHRS mark including German registered trademark SKECHERS, registration number 2051774, registered on October 12,1993 in the jurisdiction where Respondent is established.
Complainant has an established Internet presence and offers it goods to the public through its website at <www.skechers.com>.
The disputed domain name was registered on July 19, 2019 and resolves to a website that purports to offer Complainant’s branded goods for sale.
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 for the purposes of this proceeding. Respondent availed of a privacy service to conceal her identity on the public WhoIs and her identity was disclosed to Complainant as a result of Registrar’s said reply to the FORUM’s verification request.
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 adduced convincing evidence of rights in the SKECHERS mark acquired through ownership of the above-referenced United States trademark registration and its use of the mark in sales of its footwear and apparel products including on the Internet.
The disputed domain name <skechershalvalla.com> is composed of Complainant’s mark in its entirety in combination with the word “halvalla” which Complainant submits, and it has not been challenged, is a Finnish generic term which translates to the word “cheap” in the English language, and the gTLD <.com> extension.
Complainant’s trademark is the initial, dominant and only distinctive element of the disputed domain name. Accepting Complainant’s uncontested submission that it is a Finnish word meaning “cheap”, it lacks distinctive character in the Finnish language; and it is otherwise an unrecognized word with no other obvious meaning or distinguishing characteristic in the circumstances of a domain name registration or website address or other use on the Internet.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain 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 Complainant has 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 <skechershalvalla.com> arguing that the disputed domain name was registered on July 19, 2019, long after Complainant registered the SKECHERS mark and long after Complainant began using the SKECHERS mark; that Respondent is not commonly known by the disputed domain name; that the public WHOIS information lists "Domain Administrator" as the registrant and there is no other evidence in the record to suggest that the Respondent was commonly known by the disputed domain name; that the SKECHERS mark is an arbitrary term which has no meaning outside its use as a means to identify Complainant as a source of Complainant's products; that Respondent is not a licensee, authorized retailer, or distributor of Complainant's products or otherwise authorized to use the name or the SKECHERS trademark for any purpose; and that the website to which the disputed domain name resolves prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products which cannot be regarded as a bona fide or legitimate noncommercial use of the mark.
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 and that there is a possibility that the goods that Respondent purports to sell on the website to which the disputed domain name resolves are counterfeit.
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 at a discount and prominently displays Complainant’s mark without license or authority. The text on Respondent’s website is in both the Finnish and English languages in equal measure and is sparse in content. Most of the content comprises of photographs of footwear. While Complainant has not adduced any translation of the Finnish language content, there is nothing in the English language content to represent to the public that the website is not owned by, has a connection with, or is endorsed by Complainant and therefore it does not accurately disclose Respondent’s relationship with Complainant.
In these circumstances Respondent therefore could not avail of a defense based on the Oki Data principles.
Additionally, Respondent has not responded to these allegations of Complainant in any event.
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).
On July 19, 2019 the registrant chose to register the disputed domain name incorporating as its dominant and only distinctive element an exact reproduction of Complainant's SKECHERS mark which had by that time acquired an extensive reputation in the period since Complainant first registered the mark in 1994.
It is implausible that the registrant was unaware of Complainant, its name, mark, website and reputation when the disputed domain name was chosen and registered. On the balance of probabilities, the disputed domain name was registered in order to target Complainant and its goodwill. Complainant has made an uncontested assertion that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on its own. This finding is supported by the fact that Respondent has since used the disputed domain name purporting to offer Complainant’s branded products for sale.
Complainant argues that Respondent is using the SKECHERS trademark on its website to sell suspected counterfeit Skechers products that compete directly with Complainant's business. On the evidence adduced it is not possible to determine whether on the balance of probabilities the goods offered on the website are counterfeit, as alleged or inferred by Complainant and this Panel can make no finding in that regard.
The uncontested evidence of Complainant does however illustrate, that on the balance of probabilities Respondent is using the disputed domain name to divert Internet traffic to Respondent’s website.
This Panel finds, that on the balance of probabilities, that Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship ,affiliation, or endorsement of her web site and is therefore using the disputed domain name in bad faith.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has also succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is 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 <skechershalvalla.com> domain name be TRANSFERRED from Respondent to Complainant.
___________________________________
James Bridgeman SC
Panelist
Dated: April 10, 2020
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