Skechers U.S.A., Inc. II v. Graiden Cruz
Claim Number: FA1811001816930
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 Graiden Cruz (“Respondent”), Saudi Arabia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gowalkaustralia.com>, registered with NameSilo, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 16, 2018; the Forum received payment on November 16, 2018.
On November 17, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <gowalkaustralia.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 November 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2018 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@gowalkaustralia.com. Also on November 19, 2018, 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 December 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two named Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
Here, the Complaint states that “Complainant Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II owns numerous registrations for the trademarks SKECHERS GO WALK and GO WALK…” and it subsequently refers only to “Complainant Skechers”. Yet there is no mention of the relationship between the two named entities or how Skechers U.S.A., Inc. owns any rights to the claimed trademarks. In fact, all of the submitted registration certificates and other evidence of trademark registrations mention only Skechers U.S.A., Inc. II. While it may be that Skechers U.S.A., Inc. owns some rights to the claimed trademarks and has a relationship with Skechers U.S.A., Inc., II, this is a matter for the pleadings to explain or perhaps demonstrate with evidence. As the nexus to this case of the entity called Skechers U.S.A., Inc. is not explained or demonstrated, the Panel will proceed to decide this case only with respect to the entity called Skechers U.S.A., Inc. II. All subsequent uses of the term “Complainant’ herein will refer to Skechers U.S.A., Inc. II.
A. Complainant
Complainant is a multi-billion dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the trademarks GO WALK and SKECHERS GO WALK for footwear through its trademark registrations with the Chinese State Administration for Industry and Commerce (“SAIC”), the United States Patent and Trademark Office (“USPTO”), the European Intellectual Property Office (“EUIPO”), and other national trademark offices dating back to 2011. Respondent’s <gowalkaustralia.com> domain name, registered on August 21, 2018, is confusingly similar to Complainant’s GO WALK mark as it incorporates the GO WALK mark in its entirety while adding the country name “Australia” and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <gowalkaustralia.com> domain name. Respondent is not authorized or licensed to use Complainant’s GO WALK or SKECHERS GO WALK marks and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to display and sell counterfeit versions of Complainant’s products.
Respondent registered and uses the <gowalkaustralia.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it displays and sells counterfeit versions of Complainant’s goods. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the GO WALK and SKECHERS GO WALK marks prior to registering and subsequently using the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 the domain name; and
(3) the domain name has been registered or is being used in bad faith.
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.”).
Complainant claims rights in the trademarks GO WALK and SKECHERS GO WALK for footwear based upon registration of the marks with the SAIC, the USPTO, the EUIPO, and other national trademark registration offices. Registration of a mark with any national trademark office is sufficient to establish rights in that mark. See Citigroup Inc. v. 刘军, FA 1716803 (Forum Mar. 27, 2017) (“Registration with the SAIC (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i).”). Complainant has submitted into evidence copies of some of its trademark registration certificates. The Panel therefore holds that Complainant’s registration of the GO WALK and SKECHERS GO WALK trademarks with the above-mentioned national offices is sufficient to establish rights in the marks under the threshold nature of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <gowalkaustralia.com> domain name is confusingly similar to the GO WALK and SKECHERS GO WALK trademarks as the name incorporates the entirety, or a significant portion of such marks while adding the geographic term “Australia” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the Complainant’s NANO mark). The Panel therefore determines that the <gowalkaustralia.com> domain name is confusingly similar to the GO WALK and SKECHERS GO WALK marks per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <gowalkaustralia.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the GO WALK or SKECHERS GO WALK marks in any way. Where a response is lacking, information in the WHOIS record can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <gowalkaustralia.com> domain name identifies the registrant as “Graiden Cruz,” and no information on the record indicates that Respondent is known otherwise or was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <gowalkaustralia.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <gowalkaustralia.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a competing website that sells counterfeit versions of Complainant’s goods. Such use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)). Specifically, Complainant contends that the domain name resolves to a website that contains a facsimile of Complainant’s SKECHERS logo and GO WALK mark in connection to the sale of counterfeit goods. Complainant argues that the website gives the false impression that it is affiliated with, and authorized by, Complainant. Although the Complainant does not submit any further statement to support its claim that the goods offered at the <gowalkaustralia.com> website are counterfeit, the Panel notes, from a review of the screenshots submitted for the site, that the prices are significantly marked down from the typical retail prices at which Complainant sells its genuine footwear products. Such evidence has been held to support a finding that a website offers counterfeit products. See IM Production v. Erica Wong, D2016-2097 (WIPO December 9, 2016) (“The Complainant claims that the offered ISABEL MARANT products on the second website are counterfeit as evidenced by the unusually low price of the products as compared to genuine ISABEL MARANT goods. The Panel is satisfied that the Respondent is using (or has used) the disputed domain to facilitate the sale of counterfeit products.”) Finally, from the content of the <gowalkaustralia.com> website it is apparent that the Respondent is not using the phrase “go walk” in its descriptive or generic context but, rather, is specifically targeting Complainant’s GO WALK trademark.
Even if the products offered at Respondent’s website are genuine, use of the <gowalkaustralia.com> domain name does not appear to comply with the test for legitimate or fair use of a trademark by a distributor. Nowhere on the <gowalkaustralia.com> website does there appear any notification or other indication that the site has no relationship with the Complainant. The only notation appears to be a footer that states “Copyright © 2018 Skechers Go Walk All Rights Reserved.” This fails the third prong of the seminal test set out in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
The Panel therefore determines that Respondent is not making a bona fide offering of goods or services or using the disputed domain name for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
In light of the above, and in the absence of any response or other submission by the Respondent, it is determined that Respondent has no rights or legitimate interests in the <gowalkaustralia.com> domain name under Policy ¶ 4(a)(ii).
Complainant contends that in light of the fame and notoriety of Complainant's GO WALK and SKECHERS GO WALK marks, it is inconceivable that Respondent could have registered the <gowalkaustralia.com> domain name without actual or at least constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are not relevant, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, the Respondent does not appear to be subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA1810001812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") The Panel does agree with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is an adequate foundation upon which to build a finding of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the SKECHERS logo on the <gowalkaustralia.com> website and the use of the domain name to sell counterfeit version of Complainant’s goods indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the GO WALK and SKECHERS GO WALK marks.
Complainant further contends that Respondent’s registration and use of the <gowalkaustralia.com> domain name is in bad faith, as Respondent’s sale of counterfeit products amounts to an attempt to confuse and attract Internet users and compete with Complainant. Use of a domain name to sell counterfeit goods can be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). 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 a 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 notes that the disputed domain resolves to a website featuring Complainant’s trademarks and offers for sale products that appear to be counterfeit based on their greatly reduced prices as noted above. There is no response or other submission from the Respondent to rebut these conclusions. The Panel therefor finds that Respondent’s behavior demonstrates bad faith registration and use of the disputed domain pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
In light of the above, it is determined that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gowalkaustralia.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: December 12, 2018
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