Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Edon Mernica
Claim Number: FA2102001932309
Complainants are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II represented by Marshall A. Lerner of Kleinberg & Lerner, LLP, California, USA. Respondent is Edon Mernica (“Respondent”), Bayern, Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skecherslojaonline.com>, registered with Gransy, s.r.o..
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.
Bruce E. Meyerson as Panelist.
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 Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainants have provided evidence that Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc. The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006). The relationship between Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II is sufficient to establish a sufficient nexus or link between the Complainants, such that they may be treated as a single entity in this proceeding and hereafter shall be referred to as “Complainant.”
Complainant submitted a Complaint to the Forum electronically on February 16, 2021; the Forum received payment on February 16, 2021.
On February 18, 2021, Gransy, s.r.o. confirmed by e-mail to the Forum that the <skecherslojaonline.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 February 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2021 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@skecherslojaonline.com. Also on February 22, 2021, 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 March 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered August 30, 1994).
2. Respondent’s <skecherslojaonline.com>[i] domain name is identical or confusingly similar to Complainant’s SKECHERS mark as it merely adds the Portuguese term “loja” which translates to "store" in English, the generic term "online" and the generic top-level domain (gTLD) ".com."
3. Respondent lacks rights or legitimate interests in the <skecherslojaonline.com> domain name. Respondent is not commonly known by the domain name nor has Respondent been authorized by Complainant to use the SKECHERS mark.
4. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses it to pass off as Complainant while offering to sell counterfeit products.
5. Respondent registered and uses the <skecherslojaonline.com> domain name in bad faith. Respondent uses the domain name to pass off as Complainant while offering to sell counterfeit products.
6. Additionally, Respondent had actual knowledge of Complainant’s rights to the SKECHERS mark prior to registering the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SKECHERS mark. Respondent’s domain name is confusingly similar to Complainant’s SKECHERS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <skecherslojaonline.com> domain name and that Respondent registered and uses the domain name 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 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 August 30, 1994). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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, Complainant has demonstrated rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <skecherslojaonline.com> domain name is identical or confusingly similar to Complainant’s SKECHERS mark as it merely adds the Portuguese term “loja” which translates to "store" in English, the generic term "online" and the generic top-level domain (gTLD) ".com." Adding generic terms and a gTLD to a mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Therefore, the <skecherslojaonline.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <skecherslojaonline.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <skecherslojaonline.com> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the SKECHERS mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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 is not commonly known by a 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)”). Here, the WHOIS information for the <skecherslojaonline.com> domain name lists the registrant as “Edon Mernica” and no evidence in the record indicates that Respondent is authorized to use the SKECHERS mark. Therefore, the Panel holds that Respondent is not commonly known by the <skecherslojaonline.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <skecherslojaonline.com> name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to pass off as Complainant while offering to sell counterfeit products. Misusing the mark of a complainant while offering to sell counterfeit versions of the complainant’s products is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Here, the <skecherslojaonline.com> domain name resolves to a website that prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <skecherslojaonline.com> domain name in bad faith because Respondent uses the domain name to pass off as Complainant while offering to sell counterfeit products. Passing off as a complainant while offering to sell counterfeit versions of the complainant’s products can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The record shows that Respondent's website prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. Therefore, the Panel holds that Respondent registered and uses the <skecherslojaonline.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends Respondent registered the <skecherslojaonline.com> domain name with actual knowledge of Complainant’s rights in the SKECHERS mark based on the content of Respondent’s website. A respondent’s domain name can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“[T]he Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”). Complainant is engaged in the business of designing, developing, and marketing footwear and apparel products, and the fact that Respondent chose to register an exact reproduction of Complainant's SKECHERS mark with the gTLD ".com" and is using the website to sell SKECHERS branded shoes indicates that Respondent had knowledge of Complainant and Complainant's business. Thus, the Panel holds that Respondent registered the <skecherslojaonline.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has 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 <skecherslojaonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 29, 2021
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