Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Bjork Isaksson
Claim Number: FA2108001961860
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 Bjork Isaksson (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers-brasil.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 31, 2021; the Forum received payment on August 31, 2021.
On September 2, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <skechers-brasil.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 September 3, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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-brasil.com. Also on September 3, 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 September 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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 Skechers U.S.A., Inc. II.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
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.
There are two Complainants in this matter: Skechers U.S.A., Inc., and Skechers U.S.A., Inc., II. Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. The Panel finds that this is a sufficient link between the named Complainants and will refer to them as “Complainant.”
A. Complainant
1. Respondent’s <skechers-brasil.com> domain name is confusingly similar to Complainant’s SKECHERS mark.
2. Respondent does not have any rights or legitimate interests in the <skechers-brasil.com> domain name.
3. Respondent registered and uses the <skechers-brasil.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant is a global leader in the footwear industry. Complainant holds a registration for the SKECHERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,851,977, registered Aug. 30, 1994).
Respondent registered the <skechers-brasil.com> domain name on April 27, 2021, and uses it to sell counterfeit versions of Complainant’s products.
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 Panel finds that Complainant has rights in the SKECHERS mark based on registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <skechers-brasil.com> domain name uses the SKECHERS mark and merely adds the Portuguese term “brasil” and the “.com” gTLD. The addition of a geographic term and a gTLD to a mark is insufficient to differentiate a disputed domain name from a mark under Policy ¶ 4(a)(i). See Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel finds that Respondent’s <skechers-brasil.com> domain name is confusingly similar to Complainant’s SKECHERS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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”).
Complainant argues that Respondent does not have rights or legitimate interests in the <skechers-brasil.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the SKECHERS mark. The WHOIS information identifies “Bjork Isaksson” as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name, and thus has no rights 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 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).
Complainant also argues that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain to offer counterfeit goods for sale. Using a disputed domain name to offer counterfeit versions of a complainant’s goods for sale does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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.”). Complainant provides screenshots showing that Respondent uses the disputed domain name to offer counterfeit versions of Complainant’s footwear for sale. The Panel finds that this use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that using a disputed domain name to sell counterfeit versions of Complainant’s goods constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)). Therefore, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the SKECHERS mark based on the arbitrary nature of the mark and Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark when it registered the disputed domain name, in bad faith under Policy ¶ 4(a)(iii). See Mycoskie, LLC v. William Kelly, FA 1488105 (Forum Apr. 23, 2013) (“While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s use of the domain name to sell counterfeit versions of Complainant’s products, Respondent had actual knowledge of the mark and Complainant's rights.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (“Because of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent knew of Complainant's rights in the mark at registration.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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-brasil.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 30, 2021
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