Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. C Douglas / Alpha Centauri Design Concepts
Claim Number: FA2006001901341
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. Respondent is C Douglas / Alpha Centauri Design Concepts (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <skechers.pro> and <buynewskechers.site>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2020; the Forum received payment on June 22, 2020.
On June 23, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <skechers.pro>, ,<buynewskechers.site> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 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@skechers.pro, postmaster@buynewskechers.site. Also on June 25, 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.
A timely Response was received and determined to be complete on July 13, 2020.
On July 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, SKECHERS U.S.A., Inc. and SKECHERS U.S.A., Inc. II, is engaged in the business of designing, developing, and marketing footwear and apparel products.
Complainant has rights in the SKECHERS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <skechers.pro> and <buynewskechers.site> domain names are confusingly similar to Complainant’s SKECHERS mark because they each incorporate the mark in its entirety, simply adding generic terms and/or a generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <skechers.pro> and <buynewskechers.site> domain names. Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and is not commonly known by the at-issue domain names. Additionally, Respondent doesn’t use the domains for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domains to host webpages which display Complainant’s marks and offer suspected counterfeit products for sale.
Respondent registered and uses the <skechers.pro> and <buynewskechers.site> domain names in bad faith. Respondent confuses Internet users by offering competing and/or counterfeit products for sale. Additionally, Respondent had at least constructive knowledge of Complainant’s rights in the SKECHERS mark at the time the domain names were registered.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent asserted via email to the dispute resolution provider that the at-issue domain names were registered and held on behalf of another and further consented to transferring the domain names.
Complainant has rights in the SKECHERS mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the SKECHERS mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent unequivocally consents to transferring the at-issue domain names to Complainant.
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.
Preliminary Issue: Multiple Complainants
Paragraph 15(a) of the Rules for Uniform In the instant proceedings, there are two 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.” 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.”
The two named Complainants in this matter are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with one another. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)ii or 4(a)iii, when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is an express indication that Respondent agrees to transfer its at-issue domain names to Complainant. Respondent, via email to the dispute resolution provider, states: “I authorise [sic] you and/or Namecheap to do anything needed to resolve this issue and take the names away from my account.” The Panel, noting the parties’ clear agreement as to the disposition of the at-issue domain names, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced immediately above, as a necessary prerequisite to Complainant obtaining its requested relief, even where Respondent agrees to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to each at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for its SKECHERS trademark shows Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See State Farm Mutual Automobile Insurance Company v. Henry Francis, FA 1738716 (Forum July 28, 2017) (acknowledging complainant’s rights in a mark when it had registered the mark with the United States Patent and Trademark Office and the Canadian Intellectual Property Office). Furthermore, Respondent, in constructing the <skechers.pro> and <buynewskechers.site> domain names, includes Complainant’s SKECHERS trademark in its entirety in each domain names, adding the top-level domain name “.pro” in one case and the descriptive term(s) “buy new” and the top-level domain name “site” in the other. The inclusion of a descriptive term and/or a top-level domain name is insufficient to distinguish either trademark laden domain name from Complainant’s mark for the purposes of the Policy. Therefore the Panel finds that the at-issue domain names are each identical or confusingly similar to Complainant’s trademark pursuant to Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)
In light of Respondent’s consent to transfer the at-issue domain names as discussed above, the Panel finds that further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain names should be transferred to Complainant.
The parties having agreed to the requested relief and Complainant having established it has rights in a mark that is identical or confusingly similar to each at-issue domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers.pro> and<buynewskechers.site> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 20, 2020
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