Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Melanie Eggers / Martina Beyer
Claim Number: FA2003001888651
Complainant is 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 Melanie Eggers / Martina Beyer (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechershu.com> and <skechershuoutlet.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 March 17, 2020; the Forum received payment on March 17, 2020.
On March 18, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechershu.com> and <skechershuoutlet.com> 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 March 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@skechershu.com, postmaster@skechershuoutlet.com. Also on March 19, 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 April 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 names 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 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”) and many other national trademark offices around the world, the oldest of these dating back to 1994. Each of Respondent’s <skechershu.com> and <skechershuoutlet.com> domain names, registered on July 23, 2019 and July 29, 2019 respectively, is confusingly similar to Complainant’s SKECHERS mark, as the domain names incorporate the mark in its entirety, add the geographic country code for Hungary “hu”, and, in the case of <skechershuoutlet.com>, add the generic term “outlet”. Both of the domain names also add the “.com” generic top-level domain (“gTLD”).
Respondent does not have any rights or legitimate interests in the <skechershu.com> and <skechershuoutlet.com> domain names. Respondent is not authorized or licensed to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <skechershu.com> and <skechershuoutlet.com> domain names to sell what are suspected to be counterfeit versions of Complainant’s products.
Respondent has registered and uses the <skechershu.com> and <skechershuoutlet.com> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. Finally, based on the fame of Complainant’s SKECHERS mark, its registration in many countries, and the use made of the disputed domain names, Respondent must have had actual and/or constructive knowledge of the mark prior to registering the <skechershu.com> and <skechershuoutlet.com> domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of 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 names; and
(3) the disputed domain names were registered and are 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 I: 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 Aug. 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.
Preliminary Issue II: Multiple Respondents
In the instant proceedings there are two named Respondents. Paragraph 4(f) of the Policy provides that “[i]n the event of multiple disputes between you and a complainant, either you or the complainant may petition to consolidate the disputes before a single Administrative Panel….” This is allowed where it “promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy.” See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., D2009-0985 (WIPO Sep. 28, 2009). Further, ¶ 3(c) of the Rules provides that “[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” UDRP Panels have looked to a variety of factors in determining whether multiple domains are, in fact, of common ownership. These factors include resolution of the disputed domain names to similar website content, the use of similar words or letter patterns in the names, and similarities in some of the WHOIS information. Such similarities may lead to the conclusion that domains with differing WHOIS information are, in fact, owned by a single entity. See Delta Dental Plans Association v. ICS INC., et al., D2014-0474 (WIPO June 16, 2014) (Consolidation of 31 domains allowed where “[t]he Panel notes that each of the disputed domain names follows an identical naming convention, namely (DELTA DENTAL marks+ of + state name or two-letter state abbreviation); F. Hoffmann-La Roche AG v. Aleksandr Bannikov, et al., D2015-0066 (WIPO Mar. 23, 2015) (consolidation of complaint against 154 domains allowed where many had similar website content and listed the same customer service phone number).
In the present case, Complainant points out that both of the disputed domain names incorporate the SKECHERS mark as well as the country code for Hungary “hu”, and resolve to websites that display nearly identical content. Further, the Whois information for the disputed domain names shows that there are certain similarities between the two such as postal addresses in Germany, email addresses that use the same domain name, registration dates that are less than one week apart, and the registration of both domain names at the same registrar.
In view of these multiple similarities between the disputed domain names, and in the absence of any response or other submission from the Respondent in this case, the Panel finds it more likely than not that both of the disputed domain names are owned by the same person and so they may be consolidated into the present case.
Complainant claims rights in the SKECHERS mark based upon registration with the USPTO and the trademark offices of many other countries. Registration with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides a copy of one of its USPTO registrations for the SKECHERS mark. Therefore, the Panel finds that Complainant has rights in the SKECHERS mark per Policy ¶ 4(a)(i). Complainant also provides a textual list of its claimed trademark registrations in other countries but this will not be considered in the present case.[i]
Complainant next claims that Respondent’s <skechershu.com> and <skechershuoutlet.com> domain names are confusingly similar to Complainant’s SKECHERS mark as Respondent merely adds generic modifiers and a gTLD to the mark. The addition of geographic or generic terms and a gTLD to a complainant’s mark typically does not negate any confusing similarity between a disputed domain name and such mark under Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity). Further, gTLDs such as “.com” TLD also rarely have any effect on the confusion analysis. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues that Respondent merely adds the geographic country code “hu” (signifying Hungary) and, in one instance, the generic term “outlet”, along with the “.com” generic top-level domain (“gTLD”) to its SKECHERS mark and that these changes do not sufficiently distinguish the names from the mark. The Panel agrees and finds that the <skechershu.com> and <skechershuoutlet.com> domain names are 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 names 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 <skechershu.com> and <skechershuoutlet.com> domain names. Specifically, Complainant argues that Respondent is not licensed or authorized to use the SKECHERS mark and is not commonly known by the disputed domain names. In considering this issue, WHOIS information can support a finding that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent variously as “Melanie Eggers” and “Martina Beyer” and there is no other evidence to suggest that Respondent is known otherwise or that it was authorized to use the SKECHERS mark. Further, as set out more fully below, Respondent’s websites at the disputed domain names display the SKECHERS mark but in an illicit manner. As such, Respondent cannot benefit from such use of the mark under Policy ¶ 4(c)(ii). The Panel therefore finds no evidence upon which to conclude that Respondent is commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent’s lack of rights or legitimate interests in the <skechershu.com> and <skechershuoutlet.com> domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the domain names resolve to competing websites which offer 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 names resolve to nearly identical websites that clearly display 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 <skechershu.com> and <skechershuoutlet.com> domain names does not appear to comply with the test for legitimate or fair use of a trademark by a distributor. Nowhere on Respondent’s websites does there appear any notification or other indication that the sites have no relationship with the Complainant. The only notation appears to be a footer on each site that states “Powered by Skechers Cipő Webáruház” (in English “Skechers Shoes Webshop”). Complainant argues that the websites give the false impression that they are affiliated with, and authorized by, Complainant. The Panel agrees and finds that these sites fail 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 <skechershu.com> and <skechershuoutlet.com> domain names 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 websites, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the SKECHERS mark prior to registering the disputed domain names 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 <skechershu.com> and <skechershuoutlet.com> domain names 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 names resolve to nearly identical websites 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 names 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 <skechershu.com> and <skechershuoutlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 10, 2020
[i] The Panel notes that such a textual list, generated by the Complainant and unsupported by copies of registration certificates, screenshots from the various trademark offices mentioned in its list, or by a declaration or affidavit, does not constitute evidence of trademark registrations or rights. As such, this list of claimed registrations will not be considered as proof of trademark rights in this case.
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