Skechers U.S.A., Inc. et al. v. et al.
Claim Number: FA2205001996725
Complainant: Skechers U.S.A., Inc. of Manhattan Beach, California, United States of America.
Complainant: Skechers U.S.A., Inc. II of Manhattan Beach, California, United States of America.
Complainant Representative: Marshall A Lerner
Complainant Representative: Kleinberg & Lerner, LLP, of LOS ANGELES, California 90067, United States of America.
Respondents: Privacy Guardian / See PrivacyGuardian.org of Phoenix, Arizona, US.
Respondents Representative: «cFirstName» «cMiddle» «cLastName»
REGISTRIES and REGISTRARS
Registries: .TOP Registry; DotOnline Inc.; DotStore Inc.; GMO Registry, Inc.
Registrars: GoDaddy.com, LLC; NameSilo, LLC; Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Jonathan Agmon, as Examiner.
Complainant submitted: May 17, 2022
Commencement: May 23, 2022
Default Date: June 7, 2022
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 names be suspended for the life of the registration.
Clear and convincing evidence.
Procedural Findings: Multiple Respondents
Complainant submitted evidence that all the disputed domain names resolve to virtually identical webpages. The disputed domain names were registered within a very short period of time, namely, <skechersfactory.online>, <skechersfactory.shop> and <skechersfactory.top> were registered on March 8, 2022, <skechersus.store> was registered on February 21, 2022, <skecheroutlet.store> was registered on April 25, 2022, and <skqshop.store> and <skqfactorystore.online> were registered on February 26, 2022, Complainant also stated that the disputed domain name <skqshop.store> redirects to <skecheroutlet.store>. Given the circumstances, the Panel is of the view that there are sufficient grounds to conclude that the disputed domain names are subject to common control of the same person or multiple registrants acting in concert.
Factual Findings
Complainant, Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc., which is a multi-billion global leader in the footwear industry whose products are sold in over 170 countries and territories around the world. Complainant’s SKECHERS and SKCX trademarks (“Complainant’s Marks”) have been in use as Complainant’s house mark and stock symbol since as early as 1993 and 1999 respectively. Complainant’s Marks have been registered in numerous jurisdictions worldwide including in the U.S.:
- U.S. Reg. No. 1,851,977 for “SKECHERS”, registered on August 30, 1994; and
- U.S. Reg. No. 2,542,311 for “SKX”, registered on February 26, 2002.
Complainant asserts the following against the Respondent:
1. The registered domain names are identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain names [URS 1.2.6.2];
3. The domain names were registered and are being used in bad faith [URS 1.2.6.3] such as: Registrant registered the domain names primarily for the purpose of disrupting the business of a competitor; and by using the domain names Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web sites or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web sites or location or of a product or service on that web site or location.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires 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(s) is/are 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.
Determined: Finding for Complainant
Complainant owns the following registered trademarks in the U.S, including but not limited to:
- U.S. Reg. No. 1,851,977 for “SKECHERS”, registered on August 30, 1994; and
- U.S. Reg. No. 2,542,311 for “SKX”, registered on February 26, 2002.
The domain names include either of Complainant’s Marks or a confusingly similar version of Complainant’s Marks (i.e. “skecher” v. SKECHERS, and “skq” v. SKX), together with the generic terms “outlet”, “factory”, “store”, and the letters “us” (country code for the United States), all registered with various gTLD extensions, “.online”, “.shop”, “.top” and “.store”.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
Determined: Finding for Complainant
Complainant has not authorized Respondent to use Complainant’s Marks. The Respondent is not commonly known by the registered domain names.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith. a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; c. Registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant's web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Registrant's web site or location or of a product or service on that web site or location.
Determined: Finding for Complainant
Complainant provided evidence of the webpages of the disputed domain names which appear to impersonate and pass off as Complainant and defraud unsuspecting Internet users. The evidence provided clearly shows that the Respondent was aware of the Complainant’s SKECHERS and SKX Marks at the time of registration of the disputed domain names and specifically targeted Complainant. Given the clear and convincing evidence filed by the Complainant, the conclusion is that Respondent registered and used the domain names primarily for the purpose of disrupting the business of a competitor and by using the domain names Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web sites or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web sites or location or of a product or service on that web sites or location. Complainant has complied with URS 1.2.6.3 (c) and (d).
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.
<skecheroutlet.store><skechersfactory.online><skechersfactory.shop><skechersfactory.top><skechersus.store><skqfactorystore.online><skqshop.store>
Jonathan Agmon, Examiner
Dated: June 13, 2022
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