Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Eiden ROBERT
Claim Number: FA1704001728350
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 Eiden ROBERT (“Respondent”), Ohio.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers-outlet.us>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2017; the Forum received payment on April 21, 2017.
On April 25, 2017, 1API GmbH confirmed by e-mail to the Forum that the <skechers-outlet.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 4, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2017 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-outlet.us. Also on May 4, 2017, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 usTLD 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 usTLD Policy, usTLD 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
Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively “Complainant”), are major producers in the performance footwear industry based in Manhattan Beach, California. In connection with this business, Complainant uses the SKECHERS mark to promote its good and services. Complainant has rights in the SKECHERS mark based upon registration with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). Respondent’s <skechers-outlet.us> is confusingly similar to Complainant’s mark as it contains the mark in its entirety, and adds a hyphen, the descriptive or generic term “outlet”, and the country-code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in <skechers-outlet.us>. Respondent is not commonly known by the domain name. Respondent is not authorized to use Complainant’s SKECHERS mark. Respondent has failed to use the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, the domain name resolves to a website that promotes counterfeit products of Complainant.
Respondent registered or used <skechers-outlet.us> in bad faith. Counterfeit usage indicates both Policy ¶¶ 4(b)(iii) and (iv) as it is disruptive to Complainant’s legitimate business and Respondent likely profits from the confusion associated with its use of the domain name. Furthermore, Respondent likely had at least constructive knowledge of Complainant’s SKECHERS mark and its rights in the mark when registering/using the domain name under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, of Manhattan Beach, CA, USA. Complaint is the owner of domestic and international registrations for the mark SKECHERS, which it has continuously used since at least 1994 in connection with its provision of footwear and apparel.
Respondent is Eiden Robert of Brecksville, OH, USA. Respondent’s registrar’s address is listed as Homburg, Germany. The Panel notes that <skechers-outlet.us> was registered on or about October 19, 2016.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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.”).
Complainant claims rights in the SKECHERS mark based upon registration with the USPTO (e.g., Reg. No. 1,851,977, registered Aug. 30, 1994). Panels have found that USPTO registrations for a trademark may confer rights under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). The Panel here finds that Complainant has rights in the SKECHERS mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <skechers-outlet.us> is confusingly similar to Complainant’s mark as it contains the mark in its entirety, and adds a hyphen, the descriptive or generic term “outlet”, and the ccTLD “.us.” When determining confusing similarity, “[I]t is well established that the top-level domain, here ‘.us,’ is insignificant.” Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006). Further, “[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.” Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000). Additionally, panels have found that descriptive or generic terms may not distinguish a domain name from a mark in which a complainant has rights. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel here finds that Respondent’s <skechers-outlet.us> is confusingly similar to the SKECHERS mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <skechers-outlet.us>, as Respondent is not commonly known by the domain name, and Respondent is not authorized to use Complainant’s SKECHERS mark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information of record in the instant proceeding identifies Respondent as “Eiden ROBERT.” Based on the WHOIS identification and Respondent’s failure to file a response, the Panel here finds that Respondent is not commonly known by <skechers-outlet.us> under Policy ¶ 4(c)(iii).
Complainant further asserts that Respondent has failed to use the domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, the domain name resolves to a website that promotes counterfeit products of Complainant. Offering counterfeit products for sale cannot amount to a bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv). 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). The Panel notes the resolving website displays products which include: “Womens Skechers Work Pendal White Shoes,” “Mens Skechers Work Workshire Relaxed Fit Brown,” and “Womens Skechers Work Leaper Black Shoes.” The Panel here finds that Respondent has failed to provide any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) or (iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant argues that Respondent registered or used <skechers-outlet.us> in bad faith. Complainant’s arguments center on Respondent’s unauthorized or counterfeit usage, which violates Policy ¶¶ 4(b)(iii) and (iv) as it is disruptive to Complainant’s legitimate business and Respondent likely profits from the confusion associated with its use of the domain name. See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (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 here finds that Respondent’s use of <skechers-outlet.us> supports a finding of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers-outlet.us> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 13, 2017
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