Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Peter Schuster / Goransson Andersson / Peter Ehrlichmann
Claim Number: FA2104001943057
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. Respondents are Peter Schuster / Goransson Andersson / Peter Ehrlichmann (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechers-schweiz.com>, <skechersde.org>, and <skechersnewzealand.org>, registered respectively with MAT BAO CORPORATION; Gransy, s.r.o. and 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2021; the Forum received payment on April 27, 2021.
On April 27, 2021; April 28, 2021, MAT BAO CORPORATION; Gransy, s.r.o.; NameSilo, LLC confirmed by e-mail to the Forum that the <skechers-schweiz.com>, <skechersde.org> and <skechersnewzealand.org> domain names are registered with MAT BAO CORPORATION; Gransy, s.r.o. and NameSilo, LLC respectively and that Respondent is the current registrant of the names. MAT BAO CORPORATION; Gransy, s.r.o. and NameSilo, LLC have verified that Respondent is bound by the respective registration agreements 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 April 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2021 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@skechers-schweiz.com, postmaster@skechersde.org, postmaster@skechersnewzealand.org. Also on April 30, 2021, 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 May 24, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 Skechers U.S.A., Inc.
There are two named complainants. Paragraph 3(a) of the Rules states that “[a]ny 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.”
The Complaint provides evidence to show that Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc.. Absent any challenge from Respondent or any other reason not to accept that claim the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to both as “Complainant” unless otherwise stated (see, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006)).
The disputed domain names are not owned by the one party. 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.” Nevertheless, Complainant has alleged that the domain names are effectively controlled by a single person or entity, operating under several aliases.
The approach taken to this issue by the majority of UDRP panelists is to allow a single administrative proceeding in respect of several domain names not commonly held if there is reasonable evidence of a claim to actual control by one person or entity. That common control is said to be shown by the similarity of the resolving websites which exhibit the same layout and essentially the same goods for sale, plus the facts that the domain names share the same name servers and IP address and were registered only days apart during January 2021.
The Panel considers that there is adequate evidence of Complainant’s assertion of a single controlling entity and so allows these proceedings to continue against the named respondents, hereinafter referring to them collectively as “Respondent”.
A. Complainant
Complainant asserts trademark rights in SKECHERS. Complainant holds a national registration for that trademark. Complainant submits that the domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. It states that upon information and belief, Respondent is selling counterfeit copies of Complainant’s branded goods.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells footwear by reference to the trademark SKECHERS which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 1,851,977, registered August 30, 1994;
2. the disputed domain name was registered during January 2021 and resolve to very similar websites where footwear is offered for sale by reference to the trademark SKECHERS; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain names with the trademark, the gTLDs “.com” and “.org” can be disregarded. The disputed domain names take the trademark to which they add either the country names “Schweiz” (Switzerland) or “New Zealand”, or the country code for Germany “DE”. None of those additions is of distinctive value and in each case the trademark remains the recognizable part of the domain name. As such, the Panel finds the disputed domain names to be confusingly similar to the trademark (see, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding that <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; 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.")).
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The names of the underlying domain name holders, as disclosed by the Registrars, are “Peter Schuster”, “Goransson Andersson” and “Peter Ehrlichmann”. None of those names provides any indication that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark. Complainant assumes the footwear offered for sale at the resolving website is counterfeit but, in the circumstances, provides no positive proof of that claim and so periodically refers to “unauthorized versions” of its products. In either case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. Very clearly, the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain names under the Policy (see, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Further, the fact that Complainant is to some degree uncertain as to whether or not the goods are counterfeit is unimportant since all that it need establish (as it has done) is that the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods.
The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving websites exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain names to attract, for commercial gain, internet users to its websites by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of those websites.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers-schweiz.com>, <skechersde.org>, and <skechersnewzealand.org> domain names be TRANSFERRED from Respondent to Skechers U.S.A., Inc.
Debrett G. Lyons, Panelist
Dated: May 26, 2021
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