Skechers U.S.A., Inc. II v. See PrivacyGuardian.org
Claim Number: FA1910001866960
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: See PrivacyGuardian.org of Phoenix, Arizona, US.
Respondent Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: NameSilo, LLC
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.
Luz Helena Villamil Jimenez, as Examiner.
Complainant submitted: October 16, 2019
Commencement: October 17, 2019
Default Date: November 1, 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") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Findings of fact:
The case at hand refers to the domain name <skechersshoes.online>.
In accordance with the provisions of URS, Complainant claims
(i) that the domain name <skechersshoes.online> is identical or confusingly similar to a word or mark for which the Complainant holds a valid national or regional registration and that is in current use;
(ii) that The Registrant has no legitimate right or interest to the domain name, and
(iii) that the domain name was registered and is being used in bad faith since:
● Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor
●By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online 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.
Complainant claims it is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant's footwear products are sold in over 170 countries and territories around the world. As of February 1, 2019, Complainant and its network of subsidiaries and affiliates operate more than 3,000 Skechers retail locations around the world.
Complainant adds that has been using the SKECHERS trademark since as early as 1993. The USPTO granted registration of the SKECHERS trademark (Reg. No. 1851977) in 1994. Since that time, the SKECHERS trademark has been registered in numerous jurisdictions worldwide in International Class 25 for footwear. In addition, the SKECHERS trademark is duly registered with the Trademark Clearing House.
Complainant mentions that Respondent obtained registration of the domain skechersshoes.online, and this domain registration is identical to Complainant’s mark because it is an exact reproduction of the SKECHERS mark in its entirety with the addition of the generic term “shoes” at the end followed by the toplevel domain .online, and therefore it is confusingly similar to Complainant’s previously registered trademark.
Furthermore, Complainant claims that there is no evidence that Respondent holds any legitimate rights or interests in the trademark SKECHERS, and upon information and belief Respondent is not licensed or authorized by Complainant to use the SKECHERS trademark. Respondent's website prominently displays the SKECHERS trademark along with photographs of unauthorized and potentially counterfeit Skechers branded products. Respondent registered the domain name appropriating Complainant's famous SKECHERS trademark in order to suggest to Internet users that there is a connection between Complainant's products and Respondent's domain. Respondent is therefore 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 website and products offered through Respondent's website.
Lastly, Complainant asserts that Respondent registered the domain name <skechersshoes.online> on July 29, 2019, long after Complainant registered its SKECHERS mark and long after Complainant began using the SKECHERS trademark. SKECHERS is an arbitrary term which has no meaning outside its use as a means to identify Complainant as the source of Complainant's products. Therefore, it is unlikely the Respondent devised the term on its own. In view of the foregoing, there is no conceivable means for the Respondent to put the domain in good faith use without creating a likelihood of confusion with Complainant's SKECHERS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website.
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:
(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 process contains documentation demonstrating that the Complainant is the owner of the trademark SKECHERS registered on August 30, 1994 before the United States Patent and Trademark Office under Registration No. 1.851.977 and used in commerce since 1993.
The process contains as well evidence that demonstrates that Complainant’s trademark SKECHERS is in use to identify a website identified with the domain name <skechers.com>.
Consequently, the Examiner considers that the requirement of demonstrating trademark rights, and the usage thereof, has been satisfied.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
For the Examiner it is undeniable that the disputed domain name <skechersshoes.online> identically reproduces the registered trademark SKECHERS and that the addition of the word “shoes” only contributes to underline and demonstrate that the intention of the Registrant was to establish a clear association of his domain name with the trademark SKECHERS, well-known precisely in connection with footwear. Furthermore, the Examiner considers that the extension “online” does not add any distinctiveness to the disputed domain, since it only informs consumers about a channel to purchase the products.
In addition, since Respondent has defaulted, there is no evidence to establish any rights or legitimate interests in respect of the domain name in his favor.
[URS 1.2.6.3] The domain name was 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 online 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
In the present case, the distinctive and relevant part of the disputed domain name consists of the word “SKECHERS”, which happen to exactly reproduce the registered trademark “SKECHERS” owned by the Complainant. The identical reproduction of a distinctive trademark within a domain name is hardly the result of casualty, and instead evidences the intention to cause confusion to those who have access to the name by leading them to believe it also belongs to the owner of the registered trademark. In the present case, and according to the evidence submitted, Respondent’s website prominently displays the SKECHERS trademark in an identical manner to the SKECHERS trademark appearing in Complainant’s website. This activity does suggest beyond any reasonable doubt that Registrant has intentionally attempted to disrupt the business of a competitor and in addition, attract for commercial gain Internet users to Registrant’s web site 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, and therefore is being used in bad faith.
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:
<skechersshoes.online>
Luz Helena Villamil Jimenez, Examiner
Dated: November 06, 2019
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