Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Domain Administrator / See PrivacyGuardian.org
Claim Number: FA2306002049100
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 Domain Administrator / See PrivacyGuardian.org (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersclearance.online>, <skechersclearance.shop>, <skechersclearance.store>, <skechersclearance.top>, <skechersfactory.store>, <skechersfactory.xyz>, <skechersfactoryoutlet.shop>, <skechersfactoryoutlet.store>, <skechersfootwearoutlets.shop>, <skechersfootwearoutlets.store>, <skechersofficialoutlet.shop>, <skechersofficialoutlets.shop>, <skechersshoeoutlet.xyz> and <skecherstre.shop> (the “Domain Names”), registered with NameSilo, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 14, 2023. Forum received payment on June 14, 2023.
On June 14, 2023, NameSilo, LLC confirmed by e-mail to Forum that the Domain Names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 June 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2023 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@skechersclearance.online, postmaster@skechersclearance.shop, postmaster@skechersclearance.store, postmaster@skechersclearance.top, postmaster@skechersfactory.store, postmaster@skechersfactory.xyz, postmaster@skechersfactoryoutlet.shop, postmaster@skechersfactoryoutlet.store, postmaster@skechersfootwearoutlets.shop, postmaster@skechersfootwearoutlets.store, postmaster@skechersofficialoutlet.shop, postmaster@skechersofficialoutlets.shop, postmaster@skechersshoeoutlet.xyz, postmaster@skecherstre.shop. Also on June 20, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Skechers U.S.A., Inc.
Preliminary Issue: Multiple Complainants
Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. Hence, they are in privity with each other. The Panel accepts that the parent/subsidiary relationship between Complainants constitutes a sufficient nexus or link such that each may claim to have rights to the Domain Names listed in the Complaint. Hence this Decision refers to Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II as “Complainant”.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the Domain Names are effectively controlled by the same person or entity, which is operating under several aliases. The <skechersclearance.store> domain name redirects to the <skechersofficialoutlet.shop> domain and the <skechersfactory.store> domain name redirects to the <skechersofficialoutlet.shop> domain. All the Domain Names resolve to substantially identical websites that contain the same layout and design elements, all offering footwear bearing Complainant's SKECHERS trademark and all are registered with the same Registrar. Hence this Decision refers to Domain Administrator / See PrivacyGuardian.org as “Respondent”.
A. Complainant
Complainant is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through registrations of the mark including with the United States Patent and Trademark Office (“USPTO”). The Domain Names are confusingly similar to Complainant’s mark.
Respondent lacks rights and legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized or licensed Respondent to use its SKECHERS mark in the Domain Names. Respondent does not use the Domain Names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead displays Complainant’s mark and counterfeit items on its website.
Respondent registered the Domain Names in bad faith with actual knowledge of Complainant’s rights in the unique and arbitrary SKECHERS mark and uses the Domain Names in bad faith to capitalize on consumer recognition of the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights in the SKECHERS mark through registrations of the mark with multiple trademark organizations including the USPTO (e.g. Reg. No. 1,851,977, registered on August 30, 1994). The Panel finds each of Respondent’s <skechersclearance.online>, <skechersclearance.shop>, <skechersclearance.store>, <skechersclearance.top>, <skechersfactory.store>, <skechersfactory.xyz>, <skechersfactoryoutlet.shop>, <skechersfactoryoutlet.store>, <skechersfootwearoutlets.shop>, <skechersfootwearoutlets.store>, <skechersofficialoutlet.shop>, <skechersofficialoutlets.shop>, <skechersshoeoutlet.xyz> and <skecherstre.shop> Domain Names to be confusingly similar to Complainant’s SKECHERS mark as each adds a generic term which is insufficient to distinguish the domain name from the mark, namely “clearance”, “factory”, “factory outlet”, “footwear outlets”, “official outlet”, “official outlets”, “shoe outlet” and “stre” (a misspelling of “street”). The inconsequential generic top-level domains (“gTLDs”) “.online”, “shop”, “store”, “top” and “xyz” may be ignored under this element.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered between December 20, 2022 and May 15, 2023, many on the same day and in each case many years after Complainant has shown that its SKECHERS mark had become very well-known. They resolve to websites which prominently display the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s very well-known SKECHERS mark when Respondent registered the Domain Names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersclearance.online>, <skechersclearance.shop>, <skechersclearance.store>, <skechersclearance.top>, <skechersfactory.store>, <skechersfactory.xyz>, <skechersfactoryoutlet.shop>, <skechersfactoryoutlet.store>, <skechersfootwearoutlets.shop>, <skechersfootwearoutlets.store>, <skechersofficialoutlet.shop>, <skechersofficialoutlets.shop>, <skechersshoeoutlet.xyz> and <skecherstre.shop> Domain Names be TRANSFERRED from Respondent to Complainant Skechers U.S.A., Inc.
Alan L. Limbury, Panelist
Dated: July 18, 2023
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