Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Andreas Baum
Claim Number: FA2102001933249
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 Andreas Baum (“Respondent), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersfrance.com>, registered with 1API GmbH.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 23, 2021; the Forum received payment on February 23, 2021.
On February 24, 2021, 1API GmbH confirmed by e-mail to the Forum that the <skechersfrance.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@skechersfrance.com. Also on February 25, 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 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are 2 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.
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.
The Panel accepts that the uncontested evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and will treat them as a single entity in this proceeding. In this decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
Complainant, Skechers USA Inc., operates 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. 1,851,977, registered August 30, 1994). Respondent’s <skechersfrance.com> domain name is confusingly similar to Complainant’s SKECHERS mark since it contains the entire mark, appending only the geographic term “France” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <skechersfrance.com> domain name as it is not commonly known by the disputed domain name and is not licensed or authorized to use the SKECHERS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent offers conterfeit products in direct competition with Complainant.
Respondent registered and uses the <skechersfrance.com> domain name in bad faith. Respondent capitalizes on Complainant’s consumer recognition to offer counterfeit products. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <skechersfrance.com> domain name.
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 argues that Respondent’s <skechersfrance.com> domain name is confusingly similar to Complainant’s SKECHERS mark since it contains the entire mark, appending only the geographic term “France” and the “.com” gTLD. Addition of a geographic term and a gTLD does not generally negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <skechersfrance.com> domain name as it is not commonly known by the disputed domain name and is not licensed or authorized to use the SKECHERS mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (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 WHOIS information of record identifies the registrant as “Andreas Baum,” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the SKECHERS mark in the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <skechersfrance.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use and instead offers conterfeit products in direct competition with Complainant. Use of a disputed domain name to compete with a Complainant is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name). Complainant provides a screenshot of Respondent’s webpage, which Complainant claims is used to sell counterfeit versions of Complainant’s products. The Panel finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant claims Respondent registered and uses the <skechersfrance.com> domain name in bad faith as Respondent capitalizes on Complainant’s consumer recognition to offer counterfeit products. Use of a disputed domain name to pass of as and compete with a complainant is evidence of bad faith disruption of business pursuant to Policy ¶ 4(b)(iii) and bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides a screenshot of Respondent’s webpage, which Complainant claims is used to sell counterfeit versions of Complainant’s products. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Complainant also claims that Respondent registered the <skechersfrance.com> domain name with actual knowledge of Complainant’s rights in the SKECHERS mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the SKECHERS mark since it fully incorporated the mark in the disputed domain name and uses the domain to compete with Complainant. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark and registered and uses the domain name in the bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <skechersfrance.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
March 29, 2021
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