Skechers U.S.A., Inc. II v. Xian Wei Fa et al.
Claim Number: FA1808001802717
Complainant: Skechers U.S.A., Inc. II of Manhattan Beach, United States of America.
Complainant Representative:
Complainant Representative: Kleinberg & Lerner, LLP of Los Angeles, California, United States of America.
Respondent: Xian Wei Fa of Hangzhou, Zhejiang, International, CN.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn)
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 Examiner in this proceeding.
Flip Jan Claude Petillion, as Examiner.
Complainant submitted: August 22, 2018
Commencement: August 22, 2018
Default Date: September 6, 2018
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant, Skechers U.S.A., Inc. II, is a global designer, manufacturer and distributor of footwear products established in the United States. The Complainant employees approximately 12,000 employees in over 2,500 locations around the world. The Complainant is the holder of inter alia the national United States word mark “SKECHERS” (Reg. No. 1,851,977)
Respondent registered the disputed domain name <skecherssale.online> on November 10, 2016. The disputed domain name is used to redirect to a website displaying the Complainant’s figurative SKECHERS trademark and offering for sale footwear carrying the SKECHER brand.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended:
1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
URS, paras. 1.2.6 and 8.1.
[URS
1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark:
(i) for which the Complainant holds a valid national or regional registration
and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the
time the URS complaint is filed.
Determined: Finding for Complainant
The record makes clear that the Complainant “holds a valid national or regional registration and that [it] is in current use”. The Examiner finds that the second-level portion of the disputed domain name is confusingly similar to the Complainant’s registered trademark, as it incorporates the Complainant’s SKECHERS trademark in its entirety, merely adding the non-distinctive suffix “sale”. The Examiner is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity. The addition of the term “sale” may even strengthen the confusing similarity, as the term directly refers to the selling of the Complainant’s products. As the top level domain is irrelevant in assessing identity or confusing similarity, the new gTLD “.ONLINE” is of no consequence here (Facebook Inc. v. Radoslav, Claim Number: FA1308001515825). As the registered domain name is confusingly similar to a word mark for which the Complainant holds a valid national or regional registration that is in current use, the Examiner considers that the Complainant has satisfied the first element of the URS in accordance with paragraph 1.2.6.1 of the URS.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
The Complainant has not authorized the Respondent to use its registered SKECHERS trademark. The Respondent has not submitted any evidence to prove that he or she is commonly known under the disputed domain name. There is no evidence about rights or legitimate interest in SKECHERS and the disputed domain name, or evidence about a fair use either. The use of a domain name to attract Internet users to a webshop displaying the Complainant’s SKECHERS trademarks and offering for sale footwear products carrying the SKECHERS brand does not represent a bona fide offering of goods or services. Particularly since the footwear products offered on the website connected to the disputed domain name are likely counterfeit products. The Respondent does not contest the arguments of the Complainant. Therefore, the Examiner finds that the second element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.2 has also been proven.
[URS
1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
a. Registrant 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 documented out-of pocket costs directly related to the domain name;
or
b. Registrant has registered the domain name in order to prevent the trademark
holder or service mark from reflecting the mark in a corresponding domain name,
provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’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 Registrant’s web
site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
The Respondent is using the disputed domain name to redirect to a webshop displaying the Complainant’s SKECHERS trademarks and offering for sale footwear products carrying the SKECHERS brand. Redirecting the domain name to a website can be an indication of bad faith as such when it is done for commercial gain (See VistaPrint USA, Inc. v. Electric Attic, NAF Case No. 124516). The use of the disputed domain name by the Respondent to sell footwear products which are likely counterfeit of the Complainant’s products indicates that the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's SKECHERS trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
It is inconceivable to this Panel that the Respondent was unaware of the Complainant and the SKECHERS trademark when it registered the disputed domain name which is confusingly similar to the SKECHERS trademark and resolves to a website displaying the Complainant’s trademarks.
Additionally, the use of a privacy service by the Respondent indicates that the Respondent has taken active steps to conceal its identity, which may further support an inference of bad faith in light of the circumstances in which the service or the domain name is used. The Respondent also failed to respond to the complaint in accordance with the Rules.
Therefore, the Examiner finds that the third element for the Complainant to obtain the suspension of a domain name under URS 1.2.6.3 has been proven.
FINDING OF ABUSE or MATERIAL FALSEHOOD
The Complaint was neither abusive nor contained material falsehoods.
DETERMINATION
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<skecherssale.online>
Flip Jan Claude Petillion, Examiner
Dated: September 07, 2018
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