URS DEFAULT DETERMINATION
Skechers U.S.A., Inc. II v. See PrivacyGuardian.org
Claim Number: FA1904001838068
DOMAIN NAME
<skechermy.online>
<skecherph.online>
PARTIES
| Complainant: Skechers U.S.A., Inc. II of Manhattan Beach, CA, United States of America | |
|
Complainant Representative: Kleinberg & Lerner, LLP
Marshall A Lerner of Los Angeles, CA, United States of America
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| Respondent: See PrivacyGuardian.org See PrivacyGuardian.org of Phoenix, AZ, US | |
REGISTRIES and REGISTRARS
| Registries: DotOnline Inc. | |
| Registrars: NameSilo, LLC |
EXAMINER
| 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. | |
| Saravanan Dhandapani, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: April 9, 2019 | |
| Commencement: April 10, 2019 | |
| Default Date: April 25, 2019 | |
| 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"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Procedural Findings: | ||
| Multiple Complainants: Multiple Complainants: No msultiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain names <skechermy.online> and <skecherph.online>. No domain name is dismissed from this Complaint. | ||
| Multiple Respondents: Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain names <skechermy.online> and <skecherph.online>. No domain name is dismissed from this Complaint. | ||
| Findings of Fact: The case of the Complainant is as follows: Complainant Skechers U.S.A., Inc. is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and the two entities are in privity with each other. Complainant's footwear products are sold in over 170 countries and territories around the world. The SKECHERS trademark has been registered in numerous jurisdictions worldwide including in the U.S. (Reg. No. 1851977) in International Class 25 for footwear. In addition, the SKECHERS trademark is duly registered with the Trademark Clearing House. Respondent obtained registrations of the domains skechermy.online and skecherph.online. Respondent's domain registrations include, and is identical to, the SKECHERS trademark without the �s� at the end together with the country codes "my" and �ph� and the top-level domain .online. By registering in the .us TLD, Respondent creates an illusion that the websites are trustworthy. Respondent obtained registration of the skechermy.online and skecherph.online domains in bad faith. There is no evidence that Respondent holds any legitimate interest 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 unauthorized and potentially counterfeit Skechers branded products. Respondent registered the domain names, appropriating Complainant's famous SKECHERS trademark in order to suggest to Internet users that there is a connection between Complainant's products and the Respondent's domains. Respondent is using the SKECHERS trademark on its websites to sell unauthorized and potentially counterfeit Skechers products that compete directly with Complainant's business. As a result, unsuspecting consumers may be duped into believing that the products displayed on Respondent's websites are genuine Skechers products. Furthermore, by using the skechermy.online and skecherph.online domains along with photographs of unauthorized and potentially counterfeit Skechers products, Respondent is attempting to profit or is profiting by creating a likelihood of confusion with the Complainant Skechers' mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web sites and products offered through Respondent's websites. As the SKECHERS trademark has been submitted to and verified by Trademark Clearing House, Respondent must have received a warning from Trademark Clearing House indicating that the SKECHERS trademark belongs to the Complainant. Despite this warning, Respondent chose to continue with the registrations of skechermy.online and skecherph.online in violation of Complainant's rights. Complainant contends that Respondent's registrations of the domain names that are identical to Complainant's registered trademark creates a likelihood of confusion with Complainant's SKECHERS house mark as to the source, sponsorship, affiliation, or endorsement of Respondent's websites. Based on the foregoing, Complainant respectfully requests that the skechermy.online and skecherph.online domains be suspended. |
|
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.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The Complainant has proved by documentary evidences that they are the registered owner of trade and service mark �SKECHERS�. Complainant owns the SKECHERS trademark registration in numerous jurisdictions worldwide including in the US apart from registration with Trademark Clearing House. As noted, the disputed domain names <skechermy.online> and <skecherph.online> composes �skecher� (without the letter �s� and inclusion of the letters �my� and �ph�) and �.online�. The distinction between the disputed domain names and the registered trademark is the omission of the letter �s� of a registered trademark and use of the letters �my� and �ph� at the end in the disputed respective domain name which omission of a letter and addition of letters at the end of the disputed domain names are not sufficient to distinguish the disputed domain names from the complainant�s registered trademark. Thus the word �SKECHER� in disputed domain name is identical to Complainant�s registered trademark �SKECHERS�. The �.online� in disputed domain name is a generic code top-level domain name (gTLD) suffix. It is non-distinctive and is incapable of differentiating the disputed domain name from the Complainant�s registered trademark. Based on the �SKECHERS� being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Complainant owns trademark �SKECHERS� under various classifications. The Complainant�s adoption and first use of the registered trademark is for decades together. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain name. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The Respondent is not affiliated with Complainant in any manner and never authorized the Respondent to register or use any domain name incorporating �SKECHERS�. The Respondent has not responded in spite of the notice of complaint and notice of default under this URS determination process. It is well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continues to be made in full knowledge of the Complainant�s prior rights in the �SKECHERS� registered trademark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use. Thus the Panel Examiner comes to irresistible determination that (i) the disputed domain name is identical to the Complainant�s �SKECHERS� trademark; (ii) the Respondent�s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant�s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and is being used in bad faith. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties 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 name(s) be SUSPENDED for
the duration of the registration:
|
Saravanan Dhandapani Examiner
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