Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1907001851825
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 Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers-outletonline.us.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on July 8, 2019.
Complainant submitted a Complaint to the Forum electronically on July 12, 2019; the Forum received payment on July 12, 2019.
On July 18, 2019, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <skechers-outletonline.us.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with CentralNic Dispute Resolution Policy (the “CDRP Policy”)
On July 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2019 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-outletonline.us.com. Also on July 24, 2019, 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 August 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint,” while 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.”
In the case before us, there are two identified complainants: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. The Complaint filed by the two entities recites that Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc., and asserts that each of the two entities has a recognizable interest in the trademark SKECHERS. Respondent does not deny these assertions. Accordingly, the request of the Complaint that the two identified complainants be permitted to proceed together is granted, and they will be identified for all purposes in this proceeding as a single Complainant. See,
for example, Vancouver Org. Comm. for the 2010 Olympic … Games, et ano. v. Malik, FA 666119 (Forum May 12, 2006):
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.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), a panel there treating two complainants as a single entity where both held rights in trademarks contained within disputed domain names.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the SKECHERS mark, is a global leader in the lifestyle and performance footwear industry.
Complainant holds a registration for the SKECHERS trademark, whish is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,851,977, registered August 30, 1994, most recently renewed as of February 14, 2014.
Respondent registered the domain name <skechers-outletonline.us.com> on May 15, 2018.
The domain name is confusingly similar to Complainant’s SKECHERS mark.
Respondent has not been commonly known by the domain name.
Respondent is not licensed or otherwise authorized to use Complainant’s SKECHERS mark.
Respondent is not using 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 a website hosting links to other websites offering goods and services unrelated to the business of Complainant, including scented candles and Visa applications for India and Singapore.
Respondent profits from this employment of the domain name in the form of click-through fees from the operation of the resolving websites.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the SKECHERS mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 rights in the SKECHERS trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration of a mark with the USPTO was sufficient to establish a UDRP complainant’s rights in that mark for purposes of Policy¶4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bahamas). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <skechers-outletonline.us.com> domain name is confusingly similar to Complainant’s SKECHERS trademark.
The domain name incorporates the mark in its entirety, along with a hyphen [ - ] and the generic terms “outlet” and “online,” which can be taken together to relate to an aspect of Complainant’s business, plus the country code “.us” and the generic Top Level Domain (“gTLD”) .com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018):
The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the … mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of analysis under the Policy). Further see Dansko, LLC v. zhang wu, FA 1757745 (Forum December 12, 2017) (finding the domain name <danskoshoes.us.com> to be confusingly similar to the mark DANSKO under Policy ¶4(a)(i), despite the addition of the ccTLD “.us” and the gTLD “.com”). This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the <skechers-outletonline.us.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <skechers-outletonline.us.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the SKECHERS mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin / Whois Privacy Corp.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that the <skechers-outletonline.us.com> domain name resolves to a website which produces click-through revenue for the benefit of Respondent by hosting links to third-party websites marketing scented candles and Visa applications for India and Singapore. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.
See, for example, Materia, Inc. v. Michele Dinoia, FA1627209 (Forum August 20, 2015):
The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <skechers-outletonline.us.com> domain name, which we have found to be confusingly similar to Complainant’s SKECHERS trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (finding, under Policy ¶ 4(b)(iv), that a respondent’s use of a challenged domain name to maintain a web directory was evidence of bad faith where that respondent presumably profited from the receipt of click-through fees for diverting Internet users to unrelated third-party websites).
We are also convinced by the evidence that Respondent knew both of Complainant and of its rights in the SKECHERS mark when it registered the <skechers-outletonline.us.com> domain name. This further illustrates Respondent’s bad faith in registering it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith registration of a contested domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <skechers-outletonline.us.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 26, 2019
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