Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Andrea EBERHARDT / Florian FIEDLER / Jennifer SCHWARZ / Sabrina DRESDNER / Ulrich KUEFER / Juliane PFEFFER
Claim Number: FA2306002047475
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 Andrea EBERHARDT / Florian FIEDLER / Jennifer SCHWARZ / Sabrina DRESDNER / Ulrich KUEFER / Juliane PFEFFER (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <outletskechersgr.com>, <skechermagyarorszag.com>, <skechershoescanada.com>, <skechershoesindia.com>, <skecherskengatfi.com> and <skecherskoudsalg.com> registered with NETIM SARL.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 5, 2023; Forum received payment on June 5, 2023.
On June 6, 2023, NETIM SARL confirmed by e-mail to Forum that the <outletskechersgr.com>, <skechermagyarorszag.com>, <skechershoescanada.com>, <skechershoesindia.com>, <skecherskengatfi.com> and <skecherskoudsalg.com> domain names are registered with NETIM SARL and that Respondent is the current registrant of the names. NETIM SARL has verified that Respondent is bound by the NETIM SARL 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 June 7, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2023 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@outletskechersgr.com, postmaster@skechermagyarorszag.com, postmaster@skechershoescanada.com, postmaster@skechershoesindia.com, postmaster@skecherskengatfi.com, postmaster@skecherskoudsalg.com. Also on June 7, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On June 30, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 Respondent to Complainant.
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. As such, Complainant argues that Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II are both in privity with each other. The issue therefore arises whether the proceeding may be brought by multiple complainants.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum’s Supplemental Rule 1(e). Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” 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.”
Previous panels have interpreted 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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. Accordingly, it will treat them all as a single entity in this proceeding and the proceeding may go forward on that basis.
The Complainants will therefore collectively be referred to as “Complainant” in this decision.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 contends that the contents of the disputed domain names are substantially identical for the following reasons: All of the disputed domain names use the same logo in the upper lefthand corner and in the same stylization and color; all use the same four categories of footwear; all use the same icons for “Login” and “Register” pages to access and create an account with the site, next to a flag which corresponds to the country targeted by the website and search bar next to a shopping cart icon; all offer free delivery over a specified order amount and a 30 day money back guarantee; all have a photo banner showcasing Skechers products; all have a section containing a single row of discounted footwear with five footwear photos per row; all have a section featuring nine image squares listing various categories of footwear with photos; all have a “Products” section featuring an identical collection of twenty Skechers trademarks/shoe style names arranged in the same way and feature a typo (“Products” is incorrectly spelled as “Prcducts”); all have social media icons that are not linked to any social media profiles or pages but are links to share the domain name on each user’s individual social media account; all have a copyright statement; all have a section with five links to pages; and all have identical “Contact Us” pages. Based on these elements of similarity, Complainant submits that it is more likely than not that the disputed domain names are under the control of a single entity and that consolidation is therefore appropriate. The Panel agrees and therefore finds that the proceeding may therefore go forward on that basis.
A. Complainant
Complainant made the following contentions.
Complainant is an international lifestyle and performance footwear company. Complainant has rights in the SKECHERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered August 30, 1994). See Amend. Compl. Annex 2. Respondent’s <outletskechersgr.com>, <skechermagyarorszag.com>, <skechershoescanada.com>, <skechershoesindia.com>, <skecherskengatfi.com> and <skecherskoudsalg.com> (hereafter referred to as the “disputed domain names”) are identical or confusingly similar to Complainant’s SKECHERS mark because the disputed domain names include Complainant’s mark in its entirety as well as adding generic terms, country codes and/or geographic designations and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the SKECHERS mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses the disputed domain names to pass off as Complainant and advertise counterfeit versions of Complainant’s products for sale on an unauthorized basis.
Respondent registered and uses the disputed domain names in bad faith. Respondent had actual knowledge of Complainant’s rights to the SKECHERS mark prior to registering the disputed domain names as evidenced by Respondent’s use of the mark in addition to Respondent’s resolving website using Complainant’s logo and mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the international lifestyle and performance footwear industry.
2. Complainant has established its rights in the SKECHERS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977, registered August 30, 1994)
3. Respondent registered the disputed domain names as follows:
<outletskechersgr.com> registered on February 8, 2023,
<skechermagyarorszag.com> registered on June 6, 2022,
<skechershoescanada.com> registered on February 8, 2023,
skechershoesindia.com> registered on February 8, 2023,
<skecherskengatfi.com> registered on February 8, 2023
and <skecherskoudsalg.com> registered on February 8, 2023.
4. Respondent uses the disputed domain names to pass itself off as Complainant and to advertise counterfeit versions of Complainant’s products for sale on an unauthorized basis.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SKECHERS mark through Complainant’s registration of the mark with multiple governmental agencies, including the USPTO (e.g. Reg. 1,851,977, registered August 30, 1994). See Amend. Compl. Annex 2. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has demonstrated its rights in the SKECHERS mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s SKECHERS mark. Complainant argues that Respondent’s disputed domain names are identical or confusingly similar to Complainant’s SKECHERS mark because the disputed domain names include Complainant’s mark in its entirety as well as adding generic terms, country codes and/or geographic designations and the “.com” gTLD. The addition of a generic or descriptive term, country codes or geographic designations and a gTLD fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Complainant has tendered a table showing the specific disputed domain names and the derivatives used by Respondent. See Amend. Compl. Pg. 8 section (a). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s SKECHERS mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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)).
(a) Respondent has chosen to take Complainant’s SKECHERS mark and to use it in its domain names, adding generic terms, country codes and/or geographic designations which cannot negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names as follows:
<outletskechersgr.com> registered on February 8, 2023,
<skechermagyarorszag.com> registered on June 6, 2022,
<skechershoescanada.com> registered on February 8, 2023,
<skechershoesindia.com> registered on February 8, 2023,
<skecherskengatfi.com> registered on February 8, 2023 and
<skecherskoudsalg.com> registered on February 8, 2023;
(c) Respondent has caused the disputed domain names to be used to pass itself off as Complainant and advertise counterfeit versions of Complainant’s products for sale on an unauthorized basis;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the SKECHERS mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). In addition, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain names lists the registrant as “Andrea EBERHARDT / Florian FIEDLER / Jennifer SCHWARZ / Sabrina DRESDNER / Ulrich KUEFER / Juliane PFEFFER” and Complainant submits that there is no other evidence to suggest that Respondent was authorized to use the SKECHERS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent passes itself off as Complainant by advertising counterfeit versions of Complainant’s products for sale on an unauthorized basis. Using a confusingly similar disputed domain name to pass off as a complainant for the purpose of the unauthorized sale of counterfeit versions of a complainant’s products may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). Complainant provides screenshots of the disputed domain names using Complainant’s SKECHERS mark on its website as well as photographs of suspected counterfeit SKECHERS branded products that are used to sell counterfeit products that compete with Complainant. See Amend. Compl. Annex 9. Complainant argues that users may be deceived into believing Respondent’s products are authentic. The Panel may therefore find Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the SKECHERS mark based on Respondent’s use of the SKECHERS mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent passes itself off as a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant contends that Respondent’s use of the distinctive and famous SKECHERS mark in the disputed domain names and Respondent’s resolving websites using the SKECHERS mark and selling purported SKECHERS branded products demonstrate Respondent’s actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names. As the Panel agrees, it finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Secondly, all the facts show that Respondent registered the domain names knowing that it was in reality copying Complainant’s trademark to mislead the public and intending to use the domain names to sell counterfeit copies of Complainant’s products, without permission and for commercial gain. Those facts constitute bad faith registration and use of the disputed domain names.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <outletskechersgr.com>, <skechermagyarorszag.com>, <skechershoescanada.com>, <skechershoesindia.com>, <skecherskengatfi.com> and <skecherskoudsalg.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: July 2, 2023
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