Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Laura Dresdner
Claim Number: FA1911001873166
Complainants are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A. Lerner of Kleinberg & Lerner, LLP, United States of America. Respondent is Laura Dresdner (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersportugaloutlet.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
Complainants submitted a Complaint to the Forum electronically on November 26, 2019; the Forum received payment on November 27, 2019.
On November 28, 2019, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <skechersportugaloutlet.com> domain name is registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider Registration Agreement, which is in the German language, 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 December 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint in both German and English, setting a deadline of December 30, 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@skechersportugaloutlet.com. Also on December 9, 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 January 2, 2020, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainants request that the domain name be transferred from Respondent to Complainant Skechers U.S.A., Inc. II.
Preliminary Issue 1: Language of Proceeding
Pursuant to UDRP Rule 11(a), the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the Panel to determine otherwise, having regarded to the circumstances of the administrative proceeding. The Panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is German. The Forum notified the Complaint to Respondent in both German and English. Complainants have requested that English be the language of the proceeding and have exhibited screenshots of the website to which the disputed domain name resolves which contain product listings and returns information in English. The disputed domain name contains English terms.
Respondent has made no comment on the language of the proceeding.
The Panel finds that persuasive evidence has been adduced by Complainants to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
Preliminary Issue 2: multiple complainants
Pursuant to the FORUM's Supplemental Rule 1(e), two entities "who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint" may proceed as one party. Skechers U.S.A., Inc. II, the registrant of the relevant trademark, is a wholly owned subsidiary of Skechers U.S.A., Inc. This is a sufficient link to allow both companies to proceed as one party. See, e.g., Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (FORUM May 12, 2006).
The Panel will refer to both entities as “Complainants”.
A. Complainants
Since 1993 Complainants have become a leading supplier of footwear products around the world under the trademark SKECHERS, registered by Skechers U.S.A., Inc. II in many countries.
The domain name <skechersportugaloutlet.com> is confusingly similar to Complainants’ SKECHERS mark.
Respondent lacks rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name and is not a licensee or otherwise authorized to use Complainants’ mark. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s website prominently displays the SKECHERS mark along with suspected counterfeit versions of Complainants’ products offered for sale.
Respondent registered and uses the domain name in bad faith. The domain name contains an exact reproduction of the well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark. In light of the longstanding use of the SKECHERS mark and Respondent’s reproduction of that mark in the domain name and its use on the resolving webpage, Respondent must have had actual knowledge of Complainants’ rights in the mark at the time of registration of the domain name. Because the SKECHERS mark is distinctive and unique, it is unlikely that Respondent devised the term on its own.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainants have established all the elements entitling them 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 Complainants 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 Complainants have 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 Complainants’ 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”).
Skechers U.S.A., Inc. II is the registrant of United States registered trademark No. 1,851,977, registered on August 30, 1994 for footwear and clothing in International Class 25. Given their relationship of parent and subsidiary, both Complainants have rights in the SKECHERS mark.
Respondent’s <skechersportugaloutlet.com> domain name includes the SKECHERS mark in its entirety, adding the country name “portugal,” the generic term “outlet” and the inconsequential gTLD “.com.” These additions fail sufficiently to distinguish the domain name from the mark for the purposes of Policy ¶4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016).
The Panel therefore finds that the disputed domain name is confusingly similar to the SKECHERS mark under Policy ¶4(a)(i).
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of Policy ¶ 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds on the evidence produced by Complainants that the SKECHERS mark is distinctive and widely known. The disputed domain name was registered on October 8, 2019. It resolves to a website which displays the SKECHERS mark and offers for sale suspected counterfeit versions of Complainants’ products.
Complainants’ assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that she does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
In light of the longstanding use of the distinctive SKECHERS mark in relation to footwear and Respondent’s reproduction of that mark in the domain name and her use of that mark in relation to footwear on the website to which the domain name resolves, the Panel accepts Complainant’s uncontradicted contention that Respondent must have had actual knowledge of Complainant’s rights in the mark at the time of registration of the domain name and did so in order to capitalize on consumer recognition of the SKECHERS mark. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (“Complainant contends Respondent’s appropriation of Complainant’s trademark was a clear intent to trade upon Complainant’s reputation and goodwill in order to confuse Internet users. Therefore, the Panel finds Respondent did have actual knowledge of Complainant’s mark prior to registration and thus constitutes bad faith per Policy ¶ 4(a)(iii).”).
Accordingly, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersportugaloutlet.com> domain name be TRANSFERRED from Respondent to Complainant Skechers U.S.A., Inc. II.
Alan L. Limbury, Panelist
Dated: January 9, 2020
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