Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Janina sankt
Claim Number: FA2104001942552
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 Janina sankt (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersbudapest.com>, registered with MAT BAO CORPORATION.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2021; the Forum received payment on April 22, 2021.
On April 26, 2021, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <skechersbudapest.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 May 4, 2021, the Forum served the Complaint and all Annexes, including a Vietnamese and English language Written Notice of the Complaint, setting a deadline of May 24, 2021 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@skechersbudapest.com. Also on May 4, 2021, the Vietnamese and English language 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 May 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 Skechers U.S.A., Inc. II.
The Panel notes the Vietnamese language Registration Agreement. Under Rule 11(a) the language of these proceedings is therefore Vietnamese. Nevertheless, Complainant requests that the proceedings continue in the English language and under the Rules the Panel has discretion to allow that request.
In considering similar requests, UDRP panels have taken account of factors which indicate a respondent’s proficiency with the English language[i]. Here, Complainant submits that Respondent is capable of understanding English based on the facts that (a) the domain name targets a United States company and its trademark, (b) the domain name is in English and (c) the website resolving from the domain name include English characters.
The Panel finds factors (a) and (b) irrelevant and factor (c) has limited relevance insofar as the English language used on the resolving website is essentially limited by the names or descriptors of the goods used by Complainant itself (the goods being footwear which is either unauthorized or counterfeit in Complainant’s submission). None of these factors influence the Panel to find that Respondent has the capacity in the English language to read and comprehend the Complaint or file a Response in English.
That said, the Panel has a residual discretion taking all factors into account which in this instance include the facts that Respondent has made no attempt to engage in the proceedings, has not shown by its actions as discussed below to have generally acted in a bona fide manner, and the fact that conducting these proceedings in a language other than English will cause a significant additional burden and delay. In the circumstances the Panel determines that the proceedings should continue in English.
There are two named complainants. Paragraph 3(a) of the Rules states 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 Complaint provides evidence to show that Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc.. Absent any challenge from Respondent or any other reason not to accept that claim the Panel accepts that the named complainants are sufficiently linked for the purposes of Supplemental Rule 1(e). Accordingly, the Panel treats them as a single entity in this proceeding, hereinafter referring to both as “Complainant” unless otherwise stated[ii].
A. Complainant
Complainant asserts trademark rights in SKECHERS. Complainant holds a national registration for that trademark. Complainant submits that the domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells footwear by reference to the trademark SKECHERS which is the subject of United States Patent and Trademark Office (“USPTO”) Reg. No. 1,851,977, registered August 30, 1994;
2. the disputed domain name was registered on August 25, 2020 and resolves to a website where footwear is offered for sale by reference to the trademark SKECHERS and a logo-style variation thereof also registered to Complainant; and
3. there is no association between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating its trademark.
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 based on 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[iii]. Complainant therefore has rights since it provides proof of its registration of the trademark with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark, the gTLD “.com” can be disregarded as trivial. The disputed domain name takes the trademark to which it merely adds the city name, “Budapest”. Neither addition is of distinctive value and the trademark remains the recognizable part of the domain name. As such, the Panel finds the disputed domain name to be confusingly similar to the trademark[iv].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
The name of the underlying domain name holder, as disclosed by the Registrar, is “Janina sankt” which does not provide any indication that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights. Complainant states that there is no association between the parties and Respondent has no authority to use the trademark. Complainant assumes the footwear offered for sale at the resolving website is counterfeit but, in the circumstances, provides no positive proof of that claim. In either case, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Clearly the sale of counterfeit products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under the Policy[vi]. Alternatively, the trademark has been used without permission and Respondent has not shown itself to be an authorized re-seller of Complainant’s branded goods[vii]. The onus shifts to Respondent and, in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s actions fall under paragraph 4(b)(iv) above. The Panel has already found confusing similarity. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has intentionally used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with as to the source, sponsorship, affiliation, or endorsement of that website by implying to internet users that they will reach a Hungarian site either operated by Complainant or affiliated with Complainant[viii].
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersbudapest.com> domain name be TRANSFERRED from Respondent to Skechers U.S.A., Inc. II.
Debrett G. Lyons, Panelist
Dated: May 28, 2021
[i] See, for example, The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009); see also Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006).
[ii] See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
[iii] See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).
[iv] See, for example, Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”; Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”;
Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) finding <net2phone-europe.com> confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"; Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("...it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.")).
[v] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[vi] See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
[vii] See, for example, 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, which were either counterfeit products or legitimate products of complainant being resold without authorization.
[viii] See, for example, H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) determining that selling 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 and thus demonstrates bad faith per Policy ¶ 4(b)(iv).
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