Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Barbara Metzger / Lucas Farber
Claim Number: FA2103001936247
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 Barbara Metzger / Lucas Farber ("Respondent"), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersaus.com> and <skechersnl.com>, registered with MAT BAO CORPORATION.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2021; the Forum received payment on March 11, 2021.
On March 17, 2021, MAT BAO CORPORATION confirmed by email to the Forum that the <skechersaus.com> and <skechersnl.com> domain names are registered with MAT BAO CORPORATION and that Respondent is the current registrant of the names. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 22, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of April 12, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@skechersaus.com, postmaster@skechersnl.com. Also on March 22, 2021, the Vietnamese language Written Notice of the Complaint, notifying Respondent of the email 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 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant's footwear and apparel products have been sold worldwide under the SKECHERS trademark for more than 25 years. Complainant owns trademark registrations for SKECHERS in the United States, Australia, the European Union, and many other jurisdictions.
Respondent registered the disputed domain names <skechersaus.com> and <skechersnl.com> in September 2020. The domain names are being used for websites that are substantially identical to one another, although one is in English and the other is in Dutch, and that are hosted at the same IP address. Both sites prominently display Complainant's mark and logo and offer for sale products that Complainant suspects to be counterfeit versions of its own products. Complainant states that Respondent is not commonly known by the disputed domain name; is not a licensee, authorized retailer, or distributor of Complainant's products; and is not otherwise authorized to use Complainant's mark.
Complainant contends on the above grounds that each of the disputed domain names <skechersaus.com> and <skechersnl.com> is confusingly similar to its SKECHERS mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." Complainant alleges that the disputed domain names in this proceeding are effectively controlled by the same person or entity. Although the domain names are registered in different names, they target the same mark; were registered within seven days of one another; use the same registrar and privacy registration service; and are being used for substantially identical websites, hosted at the same IP address. Furthermore, Respondent has not come forward to dispute the allegation that it is one entity acting under multiple aliases, nor to object to the inclusion of both domain names in this proceeding. Under the circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity. See, e.g., SPTC, Inc. & Sotheby's v. Zhang Wei / 张伟 / Xu Shuai Wei / 徐帅伟, FA 1936089 (Forum Apr. 13, 2021) (treating domain names as being effectively controlled by one person or entity based upon similarities between domain names and other circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Melanie Eggers / Martina Beyer, FA 1888651 (Forum Apr. 10, 2021) (same). The Panel determines that both of the disputed domain names may properly be subject to this proceeding.
The Panel notes that the Registration Agreement is written in Vietnamese. Rule 11(a) provides that the language of this administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. Complainant requests that the proceeding be conducted in English, noting inter alia that the disputed domain names target a United States company and its trademark, and that one of the domain names is being used for a website that is entirely in English, and the other to a substantially identical site that is in Dutch (although Complainant notes that it uses English for filenames and other structural components). The Panel also notes that the Written Notice of the Complaint was served upon Respondent in both English and Vietnamese, and that Respondent has made no objection to Complainant's request that the proceeding be conducted in English.
Under the circumstances, the Panel finds it likely that Respondent is conversant in the English language, has received adequate notice of this proceeding, and has chosen not to participate. The Panel sees no reason to require Complainant to bear the burden and expense of arranging for a Vietnamese translation that is likely unnecessary to afford proper notice to Respondent, and that in any event Respondent is likely to ignore. See, e.g., Brooks Sports, Inc. v. Lucas Pfaff / Keefe Walle, FA 1932366 (Forum Mar. 30, 2021) (deciding to conduct proceeding in English in similar circumstances); Alticor Inc. v. Đinh Thị Mỹ Chi, FA 1919134 (Forum Dec. 7, 2020) (same). The Panel decides that English shall be the language of this proceeding.
Each of the disputed domain names <skechersaus.com> and <skechersnl.com> incorporates Complainant's registered SKECHERS trademark, adding a geographic abbreviation ("AUS" for Australia or "NL" for the Netherlands) and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Hu Yang / Huxiang, FA 1926658 (Forum Feb. 1, 2021) (finding <skecherstw.com> confusingly similar to SKECHERS); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Melanie Eggers / Martina Beyer, FA 1888651 (Forum Apr. 10, 2020) (finding <skechershu.com> confusingly similar to SKECHERS); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Lewis Wilson, FA 1875784 (Forum Jan. 15, 2020) (finding <skecherssg.com> confusingly similar to SKECHERS); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Domain Administrator / See PrivacyGuardian.org, FA 1857635 (Forum Sept. 22, 2019) (finding <skecherspt.com> confusingly similar to SKECHERS); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Farhad Salimi, FA 1719039 (Forum Mar. 28, 2017) (finding <skechersir.com> confusingly similar to SKECHERS). The Panel considers both of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered mark without authorization, and their sole apparent use has been for websites promoting the sale of competing and likely counterfeit products, in a manner obviously intended to create the false impression that the websites are connected with or authorized by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Wahl Clipper Corp. v. Ya Lei Zhu, FA 1932888 (Forum Mar. 18, 2021) (finding lack of rights or interests in similar circumstances); Brooks Sports, Inc. v. Betty Turner, FA 1930944 (Forum Mar. 9, 2021) (same); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Hu Yang / Huxiang, supra (same); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Farhad Salimi, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered domain names incorporating and obviously intended to create confusion with Complainant's mark, and is using them to promote competing and likely counterfeit goods. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Wahl Clipper Corp. v. Ya Lei Zhu, supra (finding bad faith in similar circumstances); Brooks Sports, Inc. v. Betty Turner, supra (same); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Hu Yang / Huxiang, supra (same); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Farhad Salimi, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersaus.com> and <skechersnl.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 15, 2021
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