Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. xinqian Rhys
Claim Number: FA1703001719672
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively “Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, USA. Respondent is xinqian Rhys (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersshoesoutlet.com>, registered with GoDaddy.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2017; the Forum received payment on March 1, 2017.
On March 2, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <skechersshoesoutlet.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2017 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@skechersshoesoutlet.com. Also on March 3, 2017, 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 April 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively “Complainant”), are major producers in the performance footwear industry based in Manhattan Beach, California. In connection with this business, Complainant uses the SKECHERS mark to promote its good and services. Complainant has rights in the SKECHERS mark based upon registration with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,851,977, registered August 30, 1994).
2. Respondent’s domain name, <skechersshoesoutlet.com>,[1] is confusingly similar to Complainant’s mark as it contains the mark in its entirety, and adds the descriptive or generic terms “shoes” and “outlet”, as well as the generic top level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <skechersshoesoutlet.com> domain name. Respondent is not commonly known by the domain name. Respondent is not authorized to use Complainant’s SKECHERS mark. Respondent has failed to use the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, the domain name resolves to Respondent’s own competing page for Respondent’s pecuniary gain.
4. Respondent should be considered to have registered and used the domain name in bad faith. Respondent’s bad faith is evident through its utilization of the domain to disrupt and compete with Complainant’s business. Further, Respondent utilizes the <skechersshoesoutlet.com> domain to intentionally attract Internet users seeking Complainant’s business.
5. Lastly, Respondent registered and used the domain name with actual or constructive knowledge of Complainant and its rights in the SKETCHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKECHERS mark. Respondent’s domain name is confusingly similar to Complainant’s SKECHERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skechersshoesoutlet.com> domain name and that Respondent registered and uses the domain name 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the SKECHERS mark based upon registration with the USPTO (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).).
Respondent’s domain name, <skechersshoesoutlet.com>, is confusingly similar to Complainant’s mark as it contains the mark in its entirety and adds the descriptive or generic terms “shoes” and “outlet” as well as the gTLD “.com.” Addition of gTLDs are irrelevant for a Policy ¶ 4(a)(i) analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Addition of descriptive or generic terms does not distinguish a domain name from a mark in which a complainant has rights. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel therefore finds that the <skechersshoesoutlet.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skechersshoesoutlet.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <skechersshoesoutlet.com> as Respondent is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
The WHOIS information of record identifies Respondent as “xinqian Rhys.” Moreover, the absence of evidence in the record indicates Complainant’s lack of authorization to Respondent to use Complainant’s mark, further supports a finding that Respondent is not commonly known by the <skechersshoesoutlet.com> domain name. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <skechersshoesoutlet.com> domain name.
Complainant argues Respondent’s failure to use <skechersshoesoutlet.com> in connection with a bona fide offering of goods or services or for legitimate noncommercial or fair use evidences Respondent’s lack of rights or legitimate interests in the domain name. The domain name resolves to a website that offers goods directly competing with Complainant’s business. Use of a domain name which is confusingly similar to a mark in which a complainant has rights in order to divert Internet users to a website which competes with the complainant’s business does not indicate rights or legitimate interests per Policy ¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel therefore finds under Policy ¶¶ 4(c)(i) & (iii) that Respondent has not used the <skechersshoesoutlet.com> domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is utilizing the <skechersshoesoutlet.com> domain name in bad faith by resolving to Respondent’s own site that offers competing goods and services. For example, Respondent’s resolving website advertises products for sale which include “Skechers Sport Men’s D’Lites Lace-Up Sneaker White Black” and “Skechers Go Walk 3 Women’s Walking Shoes Pink.” These facts amount to evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv). See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under 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). The Panel therefore finds that Respondent registered and uses <skechersshoesoutlet.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) & (iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the SKETCHERS mark. Complainant argues that Respondent's offering of counterfeit products at the resolving website indicates Respondent had actual knowledge of Complainant's mark and rights. The Panel agrees that the evidence shows that Respondent undoubtedly had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the <skechersshoesoutlet.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds 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 <skechersshoesoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 10, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page