Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. farhad salimi
Claim Number: FA1702001719039
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 farhad salimi ("Respondent"), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersir.com>, registered with Realtime Register B.V.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2017; the Forum received payment on February 24, 2017.
On February 28, 2017, Realtime Register B.V. confirmed by email to the Forum that the <skechersir.com> domain name is registered with Realtime Register B.V. and that Respondent is the current registrant of the name. Realtime Register B.V. has verified that Respondent is bound by the Realtime Register B.V. 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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@skechersir.com. Also on February 28, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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's footwear, apparel, and related products are sold worldwide under the SKECHERS trademark. Complainant holds trademark registrations for SKECHERS in the United States, Iran, and many other jurisdictions.
Respondent registered the disputed domain name <skechersir.com> in 2016. The domain name resolves to a website that prominently displays Complainant's mark and images of its products taken from Complainant's website, and purports to be an official website of Complainant. Complainant states that Respondent is not commonly known by the disputed domain name, is not an authorized retailer or distributor of Complainant's products, and is not authorized to use Complainant's name or mark. Complainant alleges that Respondent's website misleads consumers into believing that the products being offered for sale are genuine Skechers products.
Complainant contends on these grounds that the disputed domain name <skechersir.com> is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <skechersir.com> combines Complainant's registered mark with the geographic abbreviation "ir" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark for purposes of the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir, FA 1649807 (Forum Jan. 4, 2016) (finding <skechersiran.com> confusingly similar to SKECHERS); Skechers U.S.A, Inc. & Skechers U.S.A., Inc. II v. Huang Jiao c/o Jiaohuang, FA 1321723 (Forum June 10, 2010) (finding <skechersuk.com> confusingly similar to SKECHERS). The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to promote the sale of presumably counterfeit products in a manner likely to confuse potential customers. Complainant alleges that consumers are likely to be misled into believing that the products offered on Respondent's website are genuine, and Respondent has not disputed this allegation. The Panel infers that Respondent is not selling genuine products. See Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir, supra (reaching such an inference under similar circumstances). Such use does not give rise to rights or legitimate interests under the Policy. See id.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in an attempt to sell presumably counterfeit goods, is indicative of bad faith under these provisions of the Policy. See, e.g., Microsoft Corp. v. John Casiano, FA 1706438 (Jan. 17, 2017) (finding lack of rights or legitimate interests in similar circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar / MASK-ONLINE.ir, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersir.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: March 28, 2017
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