Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Mohammad Reza Hashemi
Claim Number: FA1904001840741
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, USA. Respondent is Mohammad Reza Hashemi (“Respondent”), Afghanistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tehranskechers.com>, registered with OnlineNIC, 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 Panelist in this proceeding.
David A. Einhorn Appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2019; the Forum received payment on April 26, 2019.
On May 7, 2019, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <tehranskechers.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2019 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@tehranskechers.com. Also on May 10, 2019, 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 June 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Pursuant to the Forum's Supplemental Rule 1(e), two entities "who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint" may proceed as one party. In interpreting the Forum's Supplemental Rule 1(e), previous Panels have allowed multiple parties to proceed as one party where a sufficient link between the parties can be shown. See, e.g., Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006).
Complainant has provided evidence that Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. As such, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II are both in privity with each other. Skechers U.S.A, Inc. and Skechers U.S.A., Inc. II will collectively be referred to as “Complainant” herein.
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 rights in the SKECHERS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977 Registered Aug. 30, 1994). Respondent’s <tehranskechers.com> domain name is confusingly similar to Complainant’s SKECHERS mark because the domain name includes the mark in its entirety and merely adds the city name “Tehran” and generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <tehranskechers.com> mark because Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark. Further, Respondent’s website prominently displays the SKECHERS mark along with photographs of counterfeit products in hope that unsuspecting consumers believe that the products are related to Complainant’s mark and products.
Respondent registered and is using the domain name in bad faith, as Respondent had knowledge of Complainant’s business and mark due to the consumer recognition and Respondent’s use of the exact mark to offer competing/counterfeit goods.
B. Respondent
Respondent failed to submit a response. The Panel notes that Respondent registered the disputed domain name on December 11, 2016.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims to have rights in the SKECHERS mark through its registrations with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (finding that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registrations for the SKECHERS mark (e.g. Reg. No. 1,851,977, registered Aug. 30, 1994). Therefore, the Panel finds that Complainant has rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s <tehranskechers.com> domain name is confusingly similar to Complainant’s SKECHERS mark because the domain includes the mark in its entirety while adding the city name “Tehran”. Panels have held that a domain name which incorporates a mark in its entirety and only adds a geographic term does not distinguish the domain name from the underlying mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). The Panel therefore finds that Respondent’s <tehrnaskechers.com> is confusingly similar to Complainant’s SKECHERS mark per Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the <tehranskechers.com> domain name because Respondent is not commonly known by the disputed domain name, nor was Respondent authorized to use Complainant’s SKECHERS mark. Where there is no response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may support a finding that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information identifies Respondent as “Mohammad Reza Hashemi / Mohammad Reza Hashemi” and there is nothing in the record to suggest that Respondent was authorized to use the SKECHERS mark. Thus, the Panel finds that Respondent is not commonly known by the <tehranskechers.com> domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s domain name prominently displays the SKECHERS mark along with photographs of counterfeit products in the hopes that unsuspecting consumers will believe that the products are related to Complainant’s SKECHERS mark and products. Panels have consistently held that using a confusingly similar domain name to sell counterfeit goods or goods that directly compete with a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and/or (iii). See 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)). Here, Complainant has provided the Panel with screenshots of Respondent’s website. These screenshots show that the domain name resolves to a website displaying the SKECHERS mark and logo, along with images of footwear and writing in a foreign language. Therefore, the Panel agrees and finds that Respondent is not using the domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark at the time Respondent registered the <tehranskechers.com> domain name and that this indicates bad faith. Specifically, Complainant contends that its extensive and global use of the SKECHERS mark, along with Respondent’s use of the domain name in connection with footwear products, indicates that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel agrees and finds that Respondent did have actual notice of Complainant’s rights in the SKECHERS mark, indicating bad faith use and registration under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied 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 <tehranskechers.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 17, 2019
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