Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. John Greem
Claim Number: FA1606001680054
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 John Greem (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersshoes.us.com>, registered with 1API GmbH.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on June 15, 2016. See Compl., at Attached Annex 2.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 20, 2016, 1API GmbH confirmed by e-mail to the Forum that the <skechersshoes.us.com> 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 CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On June 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@skechersshoes.us.com. Also on June 20, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 CDRP 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 CDRP Policy, CDRP 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 is a multi-billion dollar global leader in the lifestyle and performance footwear industry. Complainant has registered the SKECHERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,851,977, registered August 30, 1994), which demonstrates Complainant’s rights in its mark. The <skechersshoes.us.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates the SKECHERS mark and merely adds the term “shoes,” the country identifier “.us,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain, and Respondent is not authorized to use the SKECHERS mark. Respondent does not use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain to sell counterfeit Skechers products that compete directly with Complainant’s business.
Respondent registered and is using the domain in bad faith. First, Respondent’s use of the domain to sell competing counterfeit products disrupts Complainant’s business. Second, Respondent is using the domain to profit by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Finally, because Complainant’s registration of the SKECHERS mark existed long before Respondent’s registration of the disputed domain, it is clear that Respondent registered the domain with at least constructive knowledge of Complainant’s mark and its rights therein; Respondent’s knowledge of the SKECHERS mark is also made evident through Respondent’s inclusion of the term “shoes,” a term descriptive of Complainant’s business, in the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, is a global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through registration with the USPTO (Reg. No. 1,851,977, registered August 30, 1994). The <skechersshoes.us.com> domain is confusingly similar to Complainant’s mark.
Respondent, John Greem, registered the <skechersshoes.us.com> domain name on January 24, 2016.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain. Respondent is not authorized to use the SKECHERS mark. Respondent does not use the domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the domain to sell counterfeit Skechers products that compete directly with Complainant’s business.
Respondent registered and is using the domain in bad faith. First, Respondent’s use of the domain to sell competing counterfeit products disrupts Complainant’s business. Second, Respondent is using the domain to profit by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Finally, Respondent registered the domain with actual knowledge of Complainant’s mark and its rights therein.
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.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP 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 has rights in the SKECHERS mark under Policy ¶ 4(a)(i) through registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <skechersshoes.us.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates the SKECHERS mark and merely adds the term “shoes,” the country identifier “.us,” and the gTLD “.com.”
Respondent has no rights or legitimate interests in the <skechersshoes.us.com> domain name. Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use Complainant’s mark. The WHOIS information lists “John Greem” as registrant. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is not using the <skechersshoes.us.com> domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Specifically, Respondent uses its domain to sell counterfeit Skechers products that compete directly with Complainant’s business. Panels have concluded that a respondent lacks rights and legitimate interests in a domain where it uses the domain to sell counterfeit versions of a complainant’s products. See Keihin Corp. v. Youli Ltd., FA 1106190 (Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
Respondent’s use of the <skechersshoes.us.com> domain to sell competing counterfeit products disrupts Complainant’s business. Panels have consistently held that a respondent’s use of a domain to sell products that are either competitive with, or counterfeit versions of, a complainant’s products constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Respondent is using the <skechersshoes.us.com> domain to profit by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s use of the domain to sell counterfeit versions of Complainant’s products constitutes bad faith use under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Respondent had actual knowledge of the SKECHERS mark and Complainant’s rights. Therefore, Respondent registered and uses the <skechersshoes.us.com> domain in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersshoes.us.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 2, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page