Skechers U.S.A., Inc. II v. See PrivacyGuardian.org
Claim Number: FA2106001951573
Complainant: Skechers U.S.A., Inc. II of Manhattan beach, California, United States of America.
Complainant Representative: Kleinberg & Lerner, LLP of Los Angeles, California, United States of America.
Respondent: See PrivacyGuardian.org of Phoenix, Arizona, US.
REGISTRIES and REGISTRARS
Registries: DotOnline Inc.
Registrars: 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 Examiner in this proceeding.
Peter Müller, as Examiner.
Complainant submitted: June 17, 2021
Commencement: June 21, 2021
Default Date: July 7, 2021
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.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the 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 is 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.
The Complainant provided documentary evidence that it is inter alia registered owner of the US trademark registration no. 2,542,311 SKX, which was registered on February 26, 2002, covering “Footwear and shoes” in class 25, as well as documents to show that the trademark is in current use.
The disputed domain name is comprised of the letters "ske" the term "scarpe" (Italian for “shoes”). The Examiner finds, that the disputed domain name is confusingly similar to the SKX Mark. It is well established, that a domain name may be confusingly similar to a trade mark for purposes of the URS Procedure despite the addition of additional generic terms, such as “scarpe”. In addition, the fact that the disputed domain name does not include the SKX Mark in its entirety but a misspelling of it does not hinder a finding of confusing similarity as differs only in one letter which is situated in the middle of the disputed domain name and therefore not at a very prominent place. Finally, it is also well established that the specific top-level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Respondent has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent is not licensed or authorized by Complainant to use its trademarks in any manner and that there is no evidence that Respondent holds any legitimate interest in the SKX and SKECHERS trademarks. In addition, the Complainant argues that the Respondent’s use of the disputed domain name is illegitimate. The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, on the disputed domain name is used in connection with a website offering products which are marked with the Complainant's logo and which are offered with price discounts of up to 80%. The products most likely are not genuine. Even if the Respondent would offer genuine products, it still could rely on rights or legitimate interests in the present proceedings, as the Respondent’s website does not accurately and prominently disclose the Respondent’s relationship with the Complainant. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001).
The Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant states that the disputed domain name was registered and is being used in bad faith as the Respondent copies the Complainant’s trademarks and images from Complainant’s website and lures consumers to its website.
Due to the facts that the SKX Mark is highly distinctive and that the Respondent’s website available at the disputed domain name features the Complainant’s logo, the Examiner accepts that the Respondent was aware of the Complainant’s SKX Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith. As to bad faith use, by using the website at the disputed domain name to offer products similar to the ones offered by the Complainant, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain as set out in URS Procedure 1.2.6.3.d.
The Examiner finds that the disputed domain name was registered and is being used in bad faith and that the Complainant satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
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.
<skescarpe.online>
Mr. Peter Müller, Examiner
Dated: July 12, 2021
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