Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Eric SCHRODER / Jonas JAEGER / Karolin BAUER / Petra SCHWARZ / Ute BARTH / Leonie GERBER / Leon SCHWEIZER / Jana BARTH / Luca SANKT / Mathias METZGER / Sophia BAIER / Daniel Hertz / Maria Trommler
Claim Number: FA2206002001035
Complainants are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainants”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, California, USA. Respondents are Eric SCHRODER / Jonas JAEGER / Karolin BAUER / Petra SCHWARZ / Ute BARTH / Leonie GERBER / Leon SCHWEIZER / Jana BARTH / Luca SANKT / Mathias METZGER / Sophia BAIER / Daniel Hertz / Maria Trommler (“Respondents”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <scarpesportiveskechers.com>, <skecherscanadaca.com>, <skechersgreecegr.com>, <skechersmexicomx.com>, <skechersnorgeno.com>, <skechersoutletpt.com>, <skechersschoenennl.com>, <skechersshoesin.com>, <skechersskotilbuddk.com>, <skechersslovenskosk.com>, <skecherssuomifi.com>, <skechersusaonlinestore.com>, and <skecherswholesaleuk.com>, (the “Domain Names”), registered with NETIM SARL and NameSilo, LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2022. The Forum received payment on June 20, 2022.
On June 20 and 21, 2022 respectively, NETIM SARL and NameSilo, LLC confirmed by e-mail to the Forum that the Domain Names are registered with NETIM SARL and NameSilo, LLC and that Respondents are the current registrants of the names. NETIM SARL and NameSilo, LLC have verified that Respondents are bound by the NETIM SARL and NameSilo, LLC registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 2022 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@scarpesportiveskechers.com, postmaster@skecherscanadaca.com, postmaster@skechersgreecegr.com, postmaster@skechersmexicomx.com, postmaster@skechersnorgeno.com, postmaster@skechersoutletpt.com, postmaster@skechersschoenennl.com, postmaster@skechersshoesin.com, postmaster@skechersskotilbuddk.com, postmaster@skechersslovenskosk.com, postmaster@skecherssuomifi.com, postmaster@skechersusaonlinestore.com, postmaster@skecherswholesaleuk.com. Also on June 22, 2022, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2022, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Respondents to Complainant Skechers U.S.A., Inc.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of 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.”
Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. Hence, they are in privity with each other. The Panel accepts that the parent/subsidiary relationship between Complainants constitutes a sufficient nexus or link such that each may claim to have rights to the Domain Names listed in the Complaint. Henceforth this decision will refer to Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II as Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of the Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
In the instant proceedings, Complainant has alleged that the entities which control the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has shown that each of the websites to which the Domain Names resolve has the same layout and design elements, amounting to 10 specific elements of similarity. In the absence of any evidence to the contrary, these circumstances demonstrate sufficient commonality as between the Domain Names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Eric SCHRODER / Jonas JAEGER / Karolin BAUER / Petra SCHWARZ / Ute BARTH / Leonie GERBER / Leon SCHWEIZER / Jana BARTH / Luca SANKT / Mathias METZGER / Sophia BAIER / Daniel Hertz / Maria Trommler as “Respondent”.
A. Complainant
Complainant is engaged in the business of designing, developing, and marketing footwear and apparel products. Complainant has rights in the SKECHERS mark through registrations of the mark including with the United States Patent and Trademark Office (“USPTO”). The Domain Names are virtually identical and confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed to Respondent any rights in the SKECHERS mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names resolve to web pages that display Complainant’s logo and counterfeit SKECHERS-branded products in an attempt to pass off Respondent as affiliated with Complainant.
Respondent registered the Domain Names in bad faith with actual knowledge of Complainants rights in the SKECHERS mark and uses the Domain Names in bad faith in order to disrupt Complainant’s business and divert customers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the SKECHERS mark through registrations of the mark in many countries, including with the USPTO (e.g., Reg. No. 1,851,977 registered August 30, 1994). The Panel finds each of the Domain Names to be confusingly similar to Complainant’s mark because each incorporates the SKECHERS mark in its entirety and adds a geographic or generic term which is insufficient to distinguish the domain name from the mark, and the inconsequential generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered between March 27, 2021 and April 18, 2022, long after Complainant’s mark had become very well-known. Each of the Domain Names resolves to a website that prominently displays the SKECHERS trademark and photographs of what appear to be SKECHERS-branded products.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known SKETCHERS mark when Respondent registered the Domain Names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <scarpesportiveskechers.com>, <skecherscanadaca.com>, <skechersgreecegr.com>, <skechersmexicomx.com>, <skechersnorgeno.com>, <skechersoutletpt.com>, <skechersschoenennl.com>, <skechersshoesin.com>, <skechersskotilbuddk.com>, <skechersslovenskosk.com>, <skecherssuomifi.com>, <skechersusaonlinestore.com>, and <skecherswholesaleuk.com> domain names be TRANSFERRED from Respondent to Complainant Skechers U.S.A., Inc.
Alan L. Limbury, Panelist
Dated: July 14, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page