Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Tanja Pfeffer
Claim Number: FA2006001901118
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 Tanja Pfeffer (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersieftine.ro>, registered with 1API GmbH.
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 June 19, 2020; the Forum received payment on June 19, 2020.
On June 23, 2020, 1API GmbH confirmed by e-mail to the Forum that the <skechersieftine.ro> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 June 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 14, 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@skechersieftine.ro. Also on June 24, 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 July 17, 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
Complainants, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, are multi-billion-dollar global leaders in the lifestyle and performance footwear industry. Complainant Skechers U.S.A., Inc. II has rights in the 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”) and many other national trademark offices around the world, the oldest of these dating back to 1994. Respondent’s <skechersieftine.ro> domain name, registered on October 18, 2019, is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s SKECHERS mark, simply adding the Romanian generic term “ieftine,” which translates to “cheap” in English, and the “.ro” country-code top-level domain (“ccTLD”).
Respondent does not have rights or legitimate interests in the <skechersieftine.ro> domain name. Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a site that offers counterfeit versions of Complainants’ products for sale.
Respondent registered and uses the <skechersieftine.ro> domain name in bad faith. Respondent seeks to capitalize on consumer recognition of the SKECHERS mark and is using the disputed domain name to sell SKECHERS branded shoes that are suspected to be counterfeit. Lastly, Respondent registered the disputed domain name with actual and/or constructive 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 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 fiscal 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 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 registration 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]
Next, Complainant argues that Respondent’s <skechersieftine.ro> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s SKECHERS mark, with the mere addition of the Romanian generic term “ieftine” (translaing to “cheap”) and the “.ro” ccTLD. The addition of generic words and a ccTLD to a mark may not negate any confusing similarity between a disputed domain name and mark per ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Thus, the Panel finds that the disputed domain name is confusingly similar to the SKECHERS mark under 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 claims that Respondent does not have rights or legitimate interests in the <skechersieftine.ro> domain name because Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and is not commonly known by the disputed domain name. In considering this issue, WHOIS information can be used to show that a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”) Additionally, lack of authorization to use a mark may constitute further evidence that a respondent lacks rights in a mark. 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). Here, the WHOIS information of record identifies the registrant as “Tanja Pfeffer” and no information suggests that Respondent is known otherwise or that Complainant has authorized Respondent to use the SKECHERS mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <skechersieftine.ro> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, it asserts that Respondent uses the domain name to resolve to a website selling counterfeit versions of Complainant’s products. Use of a disputed domain name to sell products that are counterfeit versions of a complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, Complainant has provides screenshots of Respondent’s web page which offers a variety of shoes for sale under Complainant’s SKECHERS mark and logo. Respondent has not filed a Response or made any other submission in this case and so it does not dispute the claim that products offered at its website are counterfeit. Thus, upon a preponderance of the evidence before it, the Panel concludes that Respondent’s use of the <skechersieftine.ro> domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use 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 <skechersieftine.ro> 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, FA 1812533 (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.”) Complainant claims that “the SKECHERS trademark has become well recognized by consumers” because “Complainant has prominently and extensively used, promoted, and advertised the SKECHERS trademark for over 25 years.” However, the only evidence of Complainant’s actual use of its mark is the screenshots of one of its web pages at its www.skechers.com site. No other evidence of complainant’s actual use or its reputation with consumers has been provided to support the claimed notoriety of the SKECHERS mark. Nevertheless, based upon the appearance of Complainant’s logo and images of its products on Respondent’s websites, the Panel agrees with Complainant that Respondent must have had actual knowledge of Complainant's rights in the SKECHERS mark prior to registering the disputed domain name. Such actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent has registered and uses the <skechersieftine.ro> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users to Respondent’s own website at which counterfeit products are sold by creating confusion with Complainant's mark. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent uses a confusingly similar domain name to falsely indicate an association with a complainant. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Further, use of a disputed domain name to divert Internet users to a site that offers competing and counterfeit products can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and 4(b)(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)”). Here, Complainant claims that Respondent seeks “to capitalize on consumer recognition of the SKECHERS mark” and is “using the disputed domain name to sell SKECHERS branded suspected counterfeit shoes.” While Complainant does not cite Policy ¶¶ 4(b)(iii) or 4(b)(iv) or specifically make mention of Respondent’s intention to compete with it or to seek commercial gain, the limited arguments that Complainant makes along with the facts presented by the submitted evidence (i.e., screenshots of Respondent’s website displaying the SKECHERS logo and offering shoes for sale) does support a claim that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and 4(b)(iv). Respondent has not participated in this case and so does not dispute Complainant’s assertions. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per 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 <skechersieftine.ro> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 20, 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 itself 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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