Skechers U.S.A., Inc. v. See PrivacyGuardian.org et al.
Claim Number: FA2109001964652
Complainant: Skechers U.S.A., Inc. of Manhattan Beach, California, United States of America.
Complainant Representative:
Complainant Representative: Kleinberg & Lerner, LLP of Los Angeles, California, United States of America.
Respondent: Privacy Guardian / See PrivacyGuardian.org of REDACTED FOR PRIVACY, Arizona, US.
Respondent Representative:
REGISTRIES and REGISTRARS
Registries: .TOP Registry; DotSpace Inc.
Registrars: NameSilo, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Examiner in this proceeding.
Luz Helena Villamil-Jimenez, as Examiner.
Complainant submitted: September 24, 2021
Commencement: September 27, 2021
Default Date: October 13, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain names be suspended for the life of the registrations.
Clear and convincing evidence.
Findings of fact:
The case at hand refers to the domain names <skechersfiyat.top>, <skechershu.fun> and <skechershu.top>.
In accordance with the provisions of URS, Complainant claims:
(i) that the domain names <skechersfiyat.top>, <skechershu.fun> and <skechershu.top> are identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that the Registrant has no legitimate right or interest to the domain names, and
(iii) that the domain names were registered and are being used in bad faith such as:
ŸBy using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
ŸRegistrant registered the domain name primarily for the purpose of disrupting the business of a competitor.
Complainant states it is a multi-billion-dollar global leader in the lifestyle and performance footwear industry whose products are sold in over 170 countries and territories around the world. The SKECHERS trademark has been used as the Complainant's house mark since as early as 1993. Accordingly, the SKECHERS trademark has been registered in numerous jurisdictions worldwide including in the U.S. (Reg. No. 1851977) in International Class 25 for footwear. In addition, the SKECHERS trademark is duly registered with the Trademark Clearing House.
Complainant contends that the disputed domains skechershu.top, skechersfiyat.top and skechershu.fun are confusingly similar to Complainant's SKECHERS trademark. Each of the disputed domains includes an identical reproduction of the SKECHERS trademark, together with the letters “hu” (the country code for Hungary) or the generic term “fiyat” (Turkish for “price”), and the top level domains .top and .fun. The SKECHERS trademark is well-known, distinctive, and arbitrary, such that the addition of geographic or generic terms is insufficient to remove the disputed domains from the realm of confusing similarity.
Complainant adds that the disputed domains share an IP address. Since only sites hosted on a given server share an IP address, this evidences that the disputed domains belong to the same Respondent. Furthermore, Registrant information on WHOIS is masked and there is no evidence on the websites to suggest that Respondent holds any rights or legitimate interests in the disputed domains or the SKECHERS trademark.
In addition, the Complainant maintains that Respondent is neither licensed nor authorized by Complainant to use the SKECHERS trademark in any manner, yet the skechershu.top and skechersfiyat.top websites prominently display the SKECHERS trademark along with photographs of unauthorized and potentially counterfeit Skechers branded footwear. While the skechershu.fun domain name has not been put into active use, non-use of a domain name has not precluded previous panels from finding bad faith. Respondent registered the disputed domains, appropriating Complainant's famous SKECHERS trademark in order to suggest to Internet users that there is a connection between Complainant's products and the disputed domains. Respondent is using the SKECHERS trademark on its websites to sell unauthorized and potentially counterfeit Skechers products that compete directly with Complainant's business and is attempting to profit, or is profiting, by creating a likelihood of confusion with the Complainant Skechers' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites and products offered through Respondent's websites. As a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent's websites are genuine Skechers products.
Lastly, Complainant argues that Given that the SKECHERS mark is unique and arbitrary, it is unlikely the Respondent devised the term on their own. It is improbable for the Respondent to have registered domain names containing an exact reproduction of Complainant's SKECHERS trademark and to be using the corresponding website to list footwear products under the Complainant's well-
known SKECHERS trademark without prior knowledge of Complainant's products or business. There is no plausible circumstance under which Respondent could have legitimately registered or used the disputed domains.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
Determined: Finding for Complainant
The process contains documentation demonstrating that the Complainant is the owner of the trademark SKECHERS registered on August 30, 1994 before the United States Patent and Trademark Office under Registration No. 1.851.977 and used in commerce since 1993.
The process contains as well evidence that demonstrates that Complainant’s trademark SKECHERS is in use to identify a website identified with the domain name <skechers.com> and in addition, as contended by the Complainant, the SKECHERS trademark is duly registered with the Trademark Clearing House.
Consequently, the Examiner considers that the requirement of demonstrating trademark rights, and the usage thereof, has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
For the Examiner it is undeniable that the disputed domain names <skechersfiyat.top>, <skechershu.fun> and <skechershu.top> identically reproduce the registered trademark SKECHERS, and that the addition of the terms “fiyat” to the domain name <skechersfiyat.top> and “hu” to the domain names <skechershu.fun> and <skechershu.top> do not contribute in any manner to discard de risk of a fatal association of each of the domains with the well-known trademark SKECHERS, a fact that on the other hand clearly seemed to be the intention of the registrant when obtaining the disputed domains.
In addition, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was registered and is being used in bad faith:
a. Registrant 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 documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
In the present case, the distinctive and relevant part of the disputed domain names consists of the word “SKECHERS”, which happen to exactly reproduce the registered trademark “SKECHERS” owned by the Complainant. The identical reproduction of a distinctive trademark within a domain name is hardly the result of casualty, and instead evidences the intention to cause confusion to those who have access to the respective website or websites by leading them to believe they also belong to the owner of the registered trademark. In the present case, and according to the evidence submitted, Respondent’s websites prominently displays the SKECHERS trademark in an identical manner to the SKECHERS trademark appearing in Complainant’s website. This activity does suggest beyond any reasonable doubt that Registrant has intentionally attempted to disrupt the business of a competitor and in addition, attract for commercial gain Internet users to Registrant’s web sites by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on such web site or location, and therefore is being used in bad faith.
In sum, the Examiner considers that it is a fact that the domain names <skechersfiyat.top>, <skechershu.fun> and <skechershu.top> were registered and are being used in bad faith, intentionally attempting to attract for commercial gain Internet users to Registrant’s web sites by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location. It is clear thus that the aim of the registrations was to take advantage of the confusion between the domain names and Complainant’s rights, this fact unquestionably evidencing the bad faith of the Respondent in the present case.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<skechersfiyat.top>
<skechershu.fun> and
<skechershu.top>
Luz Helena Villamil Jimenez, Examiner
Dated: October 18, 2021
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