Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Luca Egger / Kevin Schuster
Claim Number: FA2003001888923
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 Luca Egger / Kevin Schuster (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersrooutlet.com> and <skechersro.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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2020; the Forum received payment on March 19, 2020.
On March 19, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersrooutlet.com> and <skechersro.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. 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 March 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2020 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@skechersrooutlet.com, postmaster@skechersro.com. Also on March 27, 2020, 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 April 22, 2020, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Preliminary Issues:
Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
There are two (2) Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainants simply claims that both Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II own numerous trademark registrations with the United States Patent and Trademark Office for marks that they use in connection with footwear goods and related retail services. Complainant argues 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. Complainants submitted excerpts from the 2018 10-K report filed by Skechers U.S.A., Inc. listing Skechers U.S.A., Inc. II as a subsidiary.
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.
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus will treat them both as a single entity in this proceeding. Throughout the remainder of this Decision, the Complainants will be collectively referred to as “Complainant.”
Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names resolve to substantially similar websites that are both offering, without authorization or approval, footwear bearing the Complaint's SKECHERS trademark. The copyright statements at the bottom of both websites state that the sites are "Powered by Skechers Tenisi Outlet." The common displays found on the two websites demonstrate that they are under the control of a single entity.
The Panel finds that Complainant has sufficiently presented evidence demonstrating that the listed Respondent entities are jointly controlled. Throughout the remainder of this Decision, the Respondents will be collectively referred to as “Respondent.”
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 of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977 registered Aug. 30, 1994). Respondent’s <skechersrooutlet.com> and <skechersro.com> domain names are confusingly similar to Complainant’s SKECHERS mark because both domains include the SKECHERS mark in its entirety, adding the country code / abbreviation for Romania “ro”, the generic term “outlet”, and the generic top-level domain (gTLD) ".com."
Respondent has no rights or legitimate interests in the <skechersrooutlet.com> and <skechersro.com> domain names as Respondent is not commonly known by the disputed domain names, nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely using the disputed domain names to pass off as Complainant to offer counterfeit goods.
Respondent registered and used the <skechersrooutlet.com> and <skechersro.com> domain names in bad faith. Specifically, Respondent had knowledge of Complainant’s rights in the SKECHERS mark at the time of registration. Respondent could not have possibly used the disputed domain names in a noninfringing manner given the confusing similarity of the disputed domain names to Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <skechersrooutlet.com> domain name was registered on July 28, 2019 and the <skechersro.com> domain name was registered on April 25, 2019.
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 has rights in the SKECHERS mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,851,977 registered Aug. 30, 1994). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the SKECHERS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <skechersrooutlet.com> and <skechersro.com> domain names are confusingly similar to Complainant’s SKECHERS mark because both domains include the SKECHERS mark in its entirety, adding the country code / abbreviation for Romania “ro” and the generic term “outlet.” Adding a generic term may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Additionally, adding a geographic terms may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds that Respondent’s <skechersrooutlet.com> and <skechersro.com> domain names are confusingly similar to Complainant’s SKECHERS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <skechersrooutlet.com> and <skechersro.com> domain names as Respondent is neither commonly known by the disputed domain name nor is licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Luca Egger” and “Kevin Schuster” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <skechersrooutlet.com> and <skechersro.com> domain names as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <skechersrooutlet.com> and <skechersro.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is merely using the disputed domain names to pass off as Complainant to offer counterfeit goods. Using a disputed domain name to deceive Internet users so to sell counterfeit goods may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant provides screenshots of the <skechersrooutlet.com> and <skechersro.com> domain names’ resolving webpages, which display Complainant’s mark and Complainant’s goods that Complainant alleges are counterfeit. Respondent does not dispute this. Therefore, the Panel finds that Respondent fails to use the <skechersrooutlet.com> and <skechersro.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant has therefore satisfied Policy ¶ 4(a)(ii)
Registration and Use in Bad Faith
The Panel finds that while Complainant has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent had knowledge of Complainant’s rights in the SKECHERS mark at the time of registering the <skechersrooutlet.com> and <skechersro.com> domain names. To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant in the resolving websites. As such, the Panel determines that Respondent did have actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith registration and use 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 <skechersrooutlet.com> and <skechersro.com> domain names be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
May 6, 2020
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