Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Vanessa Lang
Claim Number: FA2003001889007
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 Vanessa Lang (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersfinland.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 19, 2020; the Forum received payment on March 19, 2020.
On March 20, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersfinland.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 23, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 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@skechersfinland.com. Also on March 23, 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 15, 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.
Complainants request transfer of the disputed domain name to the second named Complainant.
A. Complainants
Complainants rely on their registered and common law rights in the SKECHERS trademark acquired by their ownership of the trademark registrations described below and their claimed use of the SKECHERS trademark primarily in connection with the marketing of footwear and apparel and related retail services since1993.
Complainants’ assert that their footwear products are sold in more than 170 countries and territories around the world, including in Finland, through retail stores and online through the website <skechers.com>.
Complainants allege that the disputed domain name <skechersfinland.com> is confusingly similar to Complainant’s SKECHERS mark because the domain name includes the SKECHERS mark in its entirety, adding only the country name “Finland”, and the generic top-level domain (gTLD) <.com>.
Complainants submit that the addition of the 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.").
Complainants add that Respondent registered the <skechersfinland.com> domain name on July 22, 2019, long after the Complainant registered and began using the SKECHERS mark. Complainants assert that the SKECHERS mark is an arbitrary term which has no meaning outside its use as a means of identification of Complainants as a source of their products and services.
Complainants submit 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.
Complainants conclude that Respondent has no legitimate reason to use the disputed domain name. Referring to a printout of the website to which the disputed domain name resolves which is exhibited as an annex to the Complaint, Complainants submit that the website prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products.
Complainants allege that Respondent registered and is using the domain name in bad faith.
Complainants submit that the very nature of Respondent's registration of the <skechersfinland.com> domain name evidences bad faith because the disputed domain name containing an exact reproduction of the well-known SKECHERS mark was registered in 2019, long after Complainants acquired their registered trademark rights in 1994, in order to capitalize on consumer recognition of the SKECHERS mark.
Complainants add moreover that the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on her own and submit 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 adds that Respondent is using the SKECHERS trademark on her website in bad faith to sell suspected counterfeit SKECHERS branded 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.
Complainants are part of an international group of companies that manufacture and sell sports footwear and apparel and provide related services under the SKECHERS name and brand. The second named Complainant is a wholly owned subsidiary of the first named Complainant.
The first named Complainant is the registered owner of United States registered trademark SKECHERS, registration number 1,851,977, registered on August 30, 1994 for goods in international class 25. Complainants also claim ownership of a large international portfolio of trademark registrations for the SKECHERS mark including Finland registered trademark SKECHERS, registration number 133387, registered on August 5, 1994 for goods in class 25 of which the second named Complainant is the registered owner.
Complainants have an established Internet presence and host a website at <skechers.com> through which the Complaint's goods are marketed.
The disputed domain name was registered on July 22, 2019, availing of a privacy service to conceal the identity of the registrant. The disputed domain name resolves to a website with sparse written content in the English and Finnish languages and photographs of models wearing footwear. The website purports to offer footwear bearing the SKECHERS mark for sale at discounted prices.
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 which disclosed the identity of Respondent.
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 the 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”).
Complainants are parent and wholly owned subsidiary corporations and have adduced convincing uncontested evidence that they each have rights in the SKECHERS trademark acquired through the abovementioned registrations in the USA and Finland.
The disputed domain name consists of Complainants’ SKECHERS trademark in its entirety in combination with the country name “Finland” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s SKECHERS trademark is the initial, dominant and only distinctive element in the disputed domain name. The addition of the country name Creates no distinguishing difference and for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because the 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).
Complainants have made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name; that the Registrar’s WhoIs information lists "Domain Administrator" as the registrant; that there is no other evidence in the record to suggest that the Respondent was commonly known by the <skechersfinland.com> domain name, that Respondent registered the <skechersfinland.com> domain name on July 22, 2019, long after the Complainant registered and began using the SKECHERS mark; that the SKECHERS mark is an arbitrary term which has no meaning other than as Complainants’ trademark; 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; that the website prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products; and that Respondent has no legitimate reason to use the disputed domain name.
Notwithstanding Respondent’s failure to file a Response or provide any defense in this proceeding, it could be argued that Complainants have alleged, but have not adduced evidence that Respondent is not a bona fide reseller of Complainant’s goods and have inferred that the goods presented on Respondent’s website appear not to be Complainants’ genuine trademarked goods and are possibly 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 and prominently displays Complainant’s mark without license or authority. The English language 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 Complainants make out a prima facie case, the burden of production shifts to Respondent to prove her 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).
Complainants’ SKECHERS trademark is the dominant and only distinctive element of the disputed domain name. The mark is unique and arbitrarily coined with no meaning other than as the source of Complainants’ goods and services.
It is therefore highly improbable that the disputed domain name was created and registered for any reason other than to refer to Complainant’s name, mark and reputation. The subsequent use of the disputed domain name as a platform purporting to offer SKECHERS branded goods for sale at discounted prices confirms that the disputed domain name was on the balance of probabilities registered in bad faith to take predatory advantage of Complainant’s reputation and goodwill.
This Panel finds therefore that on the balance of probabilities, Respondent is using the disputed domain name in an intentional 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.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. As Complainants have therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) they are entitled to succeed in their request for transfer of the disputed domain name to the second named Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersfinland.com> domain name be TRANSFERRED from Respondent to the second named Complainant Skechers U.S.A., Inc. II.
____________________________________
James Bridgeman SC
Panelist
Dated: April 16, 2020
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