Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Justus Woolworth
Claim Number: FA2102001932685
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 Justus Woolworth (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sechzapatos.online> and <clzapatos.online>, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2021; the Forum received payment on February 18, 2021.
On February 19, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <sechzapatos.online> and <clzapatos.online> 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 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@sechzapatos.online, postmaster@clzapatos.online. 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 Ho Hyun Nahm, Esq. 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 Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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. Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with each other. 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. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant contends that both domain names are operated by the same entity as the personal information for the two domain names are identical to one another. The registrant of both domain names utilized a privacy service before registering the disputed domain names. Additionally, the registrant provided the registrar with the same name, phone number, address, and email account when registering each domain name. The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
A. Complainant
i) Complainant operates a global footwear company. Complainant has rights in the SKECH and SMART SHOE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., SKECH – Reg. No. 6,029,500, registered Apr. 7, 2020; SMART SHOE – Reg. No. 4,042,923, registered Oct. 18, 2011). Respondent’s <sechzapatos.online> and <clzapatos.online> domain names are confusingly similar to Complainant’s SKECH and SMART SHOE marks. The <sechzapatos.online> domain name is confusingly similar as it only omits the letter “K” from the SKECH mark, adds the generic term “zapatos,” which is the Spanish term for “shoes,” and adds the “.online” generic top-level domain (“gTLD”). The <clzapatos.online> domain name is similarly confusing, using the translation of Complainant’s SMART SHOE mark, omitting one word, and adding the “CL” abbreviation for the country Chile and the “.online” gTLD.
ii) Respondent lacks rights and legitimate interests in the disputed domain names as it is not commonly known by either disputed domain and is neither an authorized user nor licensee of the SKECH or SMART SHOE marks. Additionally, Respondent does not use the disputed domain names for a bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses both websites to divert Internet users to websites which offer counterfeit versions of Complainant’s products.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s rights in the SKECH and SMART SHOE marks. Additionally, the unique and arbitrary nature of the SKECH and SKECHERS marks also suggests bad faith.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain names <sechzapatos.online> and <clzapatos.online> were registered on November 10, 2020 and November 6, 2020, respectively.
2. Complainant operates a global footwear company.
3. Complainant has established rights in the SKECH and SMART SHOE marks through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., SKECH – Reg. No. 6,029,500, registered Apr. 7, 2020; SMART SHOE – Reg. No. 4,042,923, registered Oct. 18, 2011).
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 asserts rights in the SKECH and SMART SHOE marks through registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., SKECH – Reg. No. 6,029,500, registered Apr. 7, 2020; SMART SHOE – Reg. No. 4,042,923, registered Oct. 18, 2011). Thus, the Panel finds Complainant has established rights in the SKECH and SMART SHOE marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <sechzapatos.online> and <clzapatos.online> domain names are confusingly similar to Complainant’s SKECH and SMART SHOE marks. The <sechzapatos.online> domain name is confusingly similar as it merely omits letter “K” from the SKECH mark, adds the term “zapatos,” which is the Spanish word for “shoes,” and adds the “.online” gTLD. The <clzapatos.online> domain name is similarly confusing, as it translates Complainant’s SMART SHOE mark to Spanish, omits a word, and adds the “CL” country code abbreviation for Chile, along with again adding the “.online” gTLD.
The Panel observes that such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire KLEIN TOOLS mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)); see additionally Register.com, Inc. v. Int’l Languages Inc., FA 558106 (Forum Nov. 9, 2005) (“Since Respondent chose <registro.com> as a Spanish match for Complainant’s REGISTER and REGISTER.COM marks, it seems appropriate to apply the doctrine of foreign equivalents in this case, as permitted under the Rules which allow a Panel to apply any law or precedent it finds applicable to a particular case.”).
However, the Panel finds that the <sechzapatos.online> domain name is not confusingly similar to Complainant’s SKECH mark, although it merely omits letter “K” from the SKECH mark, adds the term “zapatos,” which is the Spanish word for “shoes,” and adds the “.online” gTLD because the distinctive parts [SECH] and [SKECH] are not likely to cause confusion among Internet users due to the absence and the presence of letter “K” making the two sufficiently distinguished in any terms of sound, sight, and concept. The Panel also finds that the <clzapatos.online> domain name is not confusingly similar to Complainant’s SMART SHOE mark in its entirety as there is no likelihood of confusion among Internet users between the parts [CLZAPATOS] and [SMART SHOE]. The Panel notes Complainant’s argument that the <clzapatos.online> domain name adds the “CL” country code abbreviation for Chile. However, the Panel finds that the letters “CL” in the disputed domain name <clzapatos.online> are not necessarily conceived as indicating Chile in the context of position of the letters in the disputed domain name.
The Panel therefore finds the disputed domain names are not confusingly similar to Complainant’s marks, and concludes that Complainant has not satisfied Policy ¶ 4(a)(i).
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <sechzapatos.online> and <clzapatos.online> domain names REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: March 25, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page