Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Christine Koch
Claim Number: FA2109001962969
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 Christine Koch (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersindiaonline.com>, registered with NameSilo, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2021; the Forum received payment on September 9, 2021.
On September 9, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <skechersindiaonline.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. 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 September 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 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@skechersindiaonline.com. Also on September 13, 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 October 11, 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 Skechers U.S.A., Inc. II.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
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.
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 is a global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through its registrations with the United States Patent and Trademark Office (“USPTO”) and Intellectual Property India (“IPI”) (USPTO Reg. 1,851,977, registered Aug. 30, 1994; IPI 608,009, registered Sept. 28, 1993). Respondent’s <skechersindiaonline.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and adds the words “india” and “online,” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <skechersindiaonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SKECHERS mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and offers counterfeit versions of Complainant’s products on the disputed domain name’s resolving website.
Respondent registered and uses the <skechersindiaonline.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant and offer counterfeit products for sale. Additionally, Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark at the time of registration.
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 <skechersindiaonline.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”).
Identical and/or Confusingly Similar
Complainant claims rights in the SKECHERS mark through its registrations with the USPTO and IPI (USPTO Reg. 1,851,977, registered Aug. 30, 1994; IPI 608,009, registered Sep. 28, 1993). Registration with multiple trademark authorities is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <skechersindiaonline.com> domain name is identical or confusingly similar to Complainant’s SKECHERS mark. Under Policy ¶ 4(a)(i), adding a geographical term along with a generic word and the “.com” gTLD is insufficient in differentiating a disputed domain name from the mark it incorporates. See Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also eBay Inc. v. eBay Motors, FA 1731822 (Forum June 26, 2017) (holding that “words like ‘online,’ which pertain to a complainant’s trademark-related activities—fails to sufficiently distinguish domain names from registered marks.”). The disputed domain name incorporates Complainant’s SKECHERS mark in its entirety and adds the words “india” and “online”, along with the “.com” gTLD. The Panel finds that Respondent’s domain name is confusingly similar to the SKECHERS 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 is not commonly known by the <skechersindiaonline.com> domain name, nor has Complainant authorized or licensed Respondent to use its SKECHERS mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate a Respondent’s identity, while a lack of evidence demonstrating otherwise may affirm a Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS of record identifies Respondent as “Christine Koch”, and nothing in the record rebuts Complainant’s claim that it never authorized or licensed Respondent to use its SKECHERS mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <skechersindiaonline.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a complainant and sell counterfeit items is not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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.”). Complainant provides a screenshot of the disputed domain name’s resolving website, which features Complainant’s mark and purports to sell Complainant’s shoes. The Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) and Complainant has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
The use of a disputed domain name to pass off as a complainant and sell counterfeit versions of a complainant’s goods is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see additionally Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Complainant provides screenshots of the resolving website which features Complainant’s mark and logo and purports to offer Complainant’s goods for sale, which are likely counterfeits. This is evidence of bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent registered the <skechersindiaonline.com> domain name with knowledge of Complainant’s rights in the SKECHERS mark. Under Policy ¶ 4(a)(iii), while constructive knowledge is generally insufficient in demonstrating bad faith, actual knowledge may be enough, and may be demonstrated through Respondent’s incorporation of Complainant’s mark into its domain name, along with its use of the disputed domain name’s resolving website. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The disputed domain name incorporates Complainant’s SKECHERS mark in its entirety, and also features the mark on the disputed domain name’s resolving website. The Panel finds that Respondent had actual knowledge of Complainants mark and registered and uses the disputed domain name in bad faith under 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 <skechersindiaonline.com> domain name be TRANSFERRED from Respondent to Complainant, Skechers U.S.A., Inc. II.
Hon. Karl V. Fink (Ret.) Panelist
October 13, 2021
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