Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Maximilian Finkel
Claim Number: FA2002001883063
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 Maximilian Finkel (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersoutletportugal.com> registered with NameSilo, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2020; the Forum received payment on February 12, 2020.
On February 13, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersoutletportugal.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 February 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2020 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@skechersoutletportugal.com. Also on February 14, 2020, 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 March 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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
Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, (collectively, “Complainant”) is a global leader in lifestyle and performance footwear. Complainant has rights in the trademark SKECHERS mark based upon its use in commerce for over 25 years and its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the Portuguese Institute of Industrial Property (“PIIP”), and many other national trademark offices around the world, the oldest of these dating back to 1994. Respondent’s <skechersoutletportugal.com> domain name, registered on July 23, 2019, is confusingly similar to Complainant’s SKECHERS mark, as the domain name incorporates the mark in its entirety, adds the generic term “outlet” and the country name “Portugal” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <skechersoutletportugal.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the SKECHERS mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a webpage that is suspected of offering counterfeit versions of Complainant’s products for sale.
Respondent registered and is using the <skechersoutletportugal.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant and sell what are believed to be counterfeit products. Further, Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark.
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;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed 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:
(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”).
Preliminary Issue: Multiple Complainants
In the instant proceedings there are two named Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” 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.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
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 Montres Breguet SA, Tissot SA, Blancpain SA v. Fancy Bandwith, Fancy Bandwith Inc., D2016-1198 (WIPO August 19, 2016) (acknowledging that “the Swatch Group AG is the parent company of the Complainants Montres Breguet SA, Tissot SA, and Blancpain SA.” * * * “The Panel is of the view that the Complainants have a specific common grievance against the Respondent. In addition the Respondent has engaged in a common action that has affected the Complainants’ individual rights in a similar fashion”).
Here, the Complaint states that “Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc.” In support of this claim, excerpts from the 2018 10-K report filed by Skechers U.S.A., Inc. is submitted as an Annex to the Complaint and this report lists Skechers U.S.A., Inc. II as a subsidiary entity.
In light of the evidence provided, this Panel holds that the there is a link between the two named Complainants Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II and that they have a specific common grievance against the Respondent who has engaged in a common action that has affected the Complainants’ in a similar fashion. As such, they may both properly participate in this case.
Complainant claims rights in the SKECHERS mark based upon registration thereof with the USPTO, the PIIP, and many other national trademark offices around the world. Registration of a mark with a national trademark office is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the SKECHERS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <skechersoutletportugal.com> domain name is confusingly similar to the SKECHERS mark, as the name incorporates the mark in its entirety, adds the generic term “outlet”, the country name “Portugal”, and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”) The Panel therefore determines that the <skechersoutletportugal.com> domain name is confusingly similar to the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <skechersoutletportugal.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SKECHERS mark in any way. In considering this issue, WHOIS information can support a finding that the respondent is or is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the at-issue domain name as “Maximilian Finkel,” and no information on the record indicates Respondent is known otherwise or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds that Respondent has not been commonly known by the <skechersoutletportugal.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <skechersoutletportugal.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain name resolves to a competing website which offers suspected counterfeit versions of Complainant’s products. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Specifically, Complainant contends that the domain name resolves to a website that clearly displays Complainant’s SKECHERS logo as well as photographs that appear to be of counterfeit versions of Complainant’s products. Although the Complainant does not submit any further statement to support its claim that the goods offered at the website are counterfeit, the Respondent has provided no Response or made any other submission in this case to rebut Complainant’s assertion.
Even if the products offered at Respondent’s website are genuine, use of the <skechersoutletportugal.com> domain name does not appear to comply with the test for legitimate or fair use of a trademark by a distributor. Nowhere on the <skechersoutletportugal.com> website does there appear any notification or other indication that the site has no relationship with the Complainant. The only notation appears to be a footer that states “Copyright © 2020 www.skechersoutletportugal.com. Powered by Skechers Sapatos De Desconto On-Line.” Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. The Panel agrees and finds that the this site fails the third prong of the seminal test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
The Panel therefore determines that Respondent does not have rights or legitimate interests in the <skechersoutletportugal.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that, in light of the fame and notoriety of Complainant's SKECHERS mark, it is inconceivable that Respondent could have registered the <skechersoutletportugal.com> domain name without actual or at least constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, actual knowledge of a complainant’s mark has been found to support a claim of bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Based upon the appearance of Complainant’s logo and images of its products on Respondent’s website, the Panel agrees with Complainant that Respondent apparently had actual knowledge of Complainant's rights in the SKECHERS mark prior to registering the disputed domain name and further finds that this actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii).
Complainant further contends that Respondent’s registration and use of the <skechersoutletportugal.com> domain name is in bad faith, as Respondent’s sale of suspected counterfeit products amounts to an attempt to confuse and attract Internet users and compete with Complainant. Use of a domain name to sell counterfeit goods can be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See H-D U.S.A., LLC v. Linchunming / linchunming, FA 1589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s 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 has noted above that the disputed domain resolves to a website featuring Complainant’s marks and offering for sale products which Complainant contends are counterfeit based upon the photographs on the website. There is no response or other submission from the Respondent to rebut these conclusions. Under the circumstances, the Panel finds, by a preponderance of the available evidence, that Respondent’s behavior demonstrates bad faith registration and use of the disputed domain pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersoutletportugal.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: March 10, 2020
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