Skechers U.S.A., Inc. II v. WhoisGuard, Inc.
Claim Number: FA1809001805088
Complainant: Skechers U.S.A., Inc. II of Manhattan Beach, California, United States of America.
Complainant Representative: Kleinberg & Lerner, LLP of Los Angeles, California, United States of America.
Respondent: WhoisGuard, Inc. of Panama, International, PA.
REGISTRIES and REGISTRARS
Registry: DotOnline Inc.
Registrar: NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Alan L. Limbury, as Examiner.
Complainant submitted: September 7, 2018
Commencement: September 10, 2018
Default Date: September 25, 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 names be suspended for the life of the registrations.
Clear and convincing evidence.
Because both domain names are registered in the name of a privacy protection company and the identities of any underlying registrants have not been disclosed, the Examiner treats the privacy protection company as the Respondent in relation to both domain names.
Complainant has provided a copy of a trademark registration certificate showing that, since 1994, it has been the registrant of United States trademark SKECHERS, No. 1,851,977 in International Class 25 in respect of footwear and clothing. Complainant has provided screenshots showing that the domain names resolve to websites which promote clothing and footwear, prominently displaying the SKECHERS mark.
Even though 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:
· the 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 it is in current use…
· the Registrant has no legitimate right or interest to the domain name; and
· the domain name was registered and is being used in bad faith.
As to identity or confusing similarity, Complainant says each of the domain names is identical to the SKECHERS trademark, together with the modifiers “tore” and “carpe” and the top level domain .online, which creates an illusion that the websites are trustworthy.
The Examiner finds the domain names, disregarding the inconsequential gTLD .online, to be not identical but rather confusingly similar to the SKECHERS trademark. Complainant has demonstrated that evidence of use of that mark has been validated by the Trademark Clearinghouse. This shows that the mark is in current use pursuant to URS Procedure 1.2.6.1.a. Complainant has established this element.
As to legitimacy, Complainant says there is no evidence that Respondent holds any legitimate interest or rights in the trademark SKECHERS. Respondent is not licensed or authorized by Complainant to use the SKECHERS trademark. Respondent's websites prominently display the SKECHERS trademark along with photographs of counterfeit Skechers products.
The Examiner finds that these assertions suffice to establish a prima facie case of absence of rights or legitimate interest in the domain names on the part of Respondent. Complainant has established this element.
Complainant says Respondent registered the domain names in bad faith, appropriating Complainant’s famous SKECHERS trademark in order to suggest to Internet users a connection between Complainant’s products and Respondent's domain names and is using the SKECHERS trademark on the websites to sell counterfeit products that compete directly with Complainant's business.
The Examiner accepts that the use of the domain names to resolve to websites that appear to promote, for commercial gain, Complainant’s products under Complainant’s trademark creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites and products offered through Respondent's websites. Under URS Procedure 1.2.6.3.d, these circumstances demonstrate both bad faith registration and bad faith use. Complainant has established this element.
After reviewing the Complainant’s submissions, the Examiner determines that
Alan L. Limbury, Examiner
Dated: September 26, 2018
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