Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Sigrid Hestnes
Claim Number: FA2007001904067
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 Sigrid Hestnes (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersbuty.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2020; the Forum received payment on July 13, 2020.
On July 14, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersbuty.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 July 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@skechersbuty.com. Also on July 21, 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 August 13, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant argues Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with each other. See Compl. Annex 2.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Accordingly, it will treat them all as a single entity in this proceeding and the proceeding may go forward on that basis.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). See Compl. Ex. 3. Respondent’s <skechersbuty.com> domain name is confusingly similar to Complainant’s mark, simply adding the Polish generic term “buty,” which translates for “shoes” in English, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <skechersbuty.com> domain name. Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a site which offers counterfeit versions of Complainant’s products for sale.
Respondent registered and uses the <skechersbuty.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site. Additionally, Respondent is offering counterfeit products for sale. Lastly, Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a multi-billion-dollar global leader in the lifestyle and performance footwear industry.
2. Complainant has established its trademark rights in the SKECHERS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994).
3. Respondent registered the <skechersbuty.com> domain name on March 2, 2020.
4. Respondent has caused the disputed domain name to resolve to a website which offers counterfeit versions of Complainant’s products for sale.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SKECHERS mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). See Compl. Ex. 3. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides evidence of registration of the SKECHERS mark with the USPTO. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SKECHERS mark. Complainant argues that Respondent’s <skechersbuty.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s SKECHERS mark, with the mere addition of the Polish generic word “buty” which translates to “shoes” in English, and the “.com” gTLD. The addition of a generic word and a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark per ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that the disputed domain name is confusingly similar to the SKECHERS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s SKECHERS trademark and to use it in its domain name, adding the Polish generic term “buty” which translates to “shoes” in English and which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the <skechersbuty.com> domain name on March 2, 2020;
(c) Respondent has caused the disputed domain name to resolve to a website which offers counterfeit versions of Complainant’s products for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <skechersbuty.com> domain name because Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Sigrid Hestnes” as the registrant and no information suggests that Complainant has authorized Respondent to use the SKECHERS mark in any way. See Compl. Ex. 6. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the <skechersbuty.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website selling counterfeit versions of Complainant’s products. Use of a disputed domain name to sell products that are counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant has provided screenshots of Respondent’s web page which offers a variety of shoes for sale under Complainant’s SKECHERS mark and logo. See Compl. Ex. 7. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <skechersbuty.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to indicate a false association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant claims Respondent created a likelihood of confusion with Complainant and its trademarks by registering a domain that in its entirety incorporates Complainant’s SKECHERS mark and gives the impression that interested individuals will receive information and products directly from Complainant. However, individuals are presented with products that are similar to Complainant’s own webpage, but there is actually no affiliation with Complainant. See Compl. Ex. 7. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent uses the disputed domain name to misdirect users to a commercial website which offers counterfeit versions of Complainant’s products for sale. Registering a domain name to divert Internet users to Respondent’s website to offer counterfeit products can evince bad faith registration and use per Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii)”). Complainant has provided screenshots of Respondent’s website which features footwear products under the SKECHERS mark, similar to those products offered by Complainant. See Compl. Ex. 7. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Thirdly, Complainant argues Respondent must have had actual and/or constructive knowledge of Complainant’s SKECHERS mark. The Panel is reminded that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant). Complainant submits that due to the fame of the SKECHERS mark, Respondent’s use of the disputed domain name which features counterfeit versions of Complainant’s products, along with Complainant’s logo, and Respondent’s use of Complainant’s mark in its entirety render it wholly implausible that Respondent created the domain name independently. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersbuty.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 14, 2020
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