Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. zhang jian
Claim Number: FA1604001670785
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, United States. Respondent is zhang jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers2015.com> (the “Domain Name”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 15, 2016; the Forum received payment on April 15, 2016.
On Apr 19, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <skechers2015.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2016 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@skechers2015.com. Also on April 19, 2016, 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 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 submissions can be summarised as follows:
Complainant is a global leader in the lifestyle and performance footwear industry. The trade mark SKECHERS is the house mark appearing on the Complainant's products and was registered for the same in 1994.
The Domain Name registered in 2015 is confusingly similar to the SKECHERS mark including it and adding a year modifier '2015' and .com. These additions do not remove the Domain Name from the realm of confusing similarity.
Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, it is not an authorised distributor or otherwise authorised to use the SKECHERS mark. Respondent's web site prominently displays the SKECHERS mark along with photographs of counterfeit SKECHERS products. As a result unsuspecting customers might be confused into thinking the products displayed on the Respondent's site are genuine SKECHERS products. The use shows the Respondent's knowledge of the Complainant and its products.
The Domain Name disrupts the Complainant’s business by diverting customers seeking the Complainant’s web site to the Respondent's.
Respondent registered and is using the domain name in bad faith. The Respondent intentionally attracts for commercial gain Internet users to its web site by creating a likelihood of confusion with Complainant's SKECHERS trade mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a global leader in the lifestyle and performance footwear industry. It owns the registered trade mark SKECHERS for its products registered since 1994.
Respondent's web site prominently displays the SKECHERS mark along with photographs of counterfeit SKECHERS products.
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 Respondent has not responded and does not explain why he has used the Complainant's trade mark to offer competing third party products with no connection with the Complainant. Previous panels have held that it is not a bona fide offering of goods and services or a legitimate non-commercial or fair use where a respondent uses a domain name to display links to products that directly compete with the Complainant’s business. See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that sale of counterfeit products is evidence the respondent does not make a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name). Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including:
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
The web site attached to the Domain Name uses the Complainant’s SKECHERS trade mark and depicts counterfeit products mimicking the products of the Complainant. It is not clear that there is no connection with the Complainant and as such the use is confusing.
Panels have agreed that a respondent's
use of a domain name to sell counterfeit versions of a complainant's products constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Juicy
Couture Inc. v. Chinasupply, FA 1222544 (Forum
Oct. 13, 2008) (holding that the selling of counterfeit versions of a complainant’s
products disrupted the Complainant’s business and is evidence of bad faith
registration and use.).
Panels have also held that a respondent engages in bad faith registration and
use under section 4(b)(iv) where it uses a domain to sell counterfeit products.
See 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 of the complainant's affiliation with the disputed domain name and
allows the respondent to profit from that confusion.).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers2015.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 16, 2016
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