Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. MelanieVogtDE / Deborah Ryan
Claim Number: FA2306002049226
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 MelanieVogtDE / Deborah Ryan (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 15, 2023; Forum received payment on June 15, 2023.
On June 15, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@skechersenespana.com, postmaster@tiendaskechersargentina.com, postmaster@turkiye-skechers.com. Also on June 19, 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 July 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco, 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 Issues
Multiple Complainants
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.”
The two named Complainants in this matter are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with one another. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Multiple Respondents
Complainant alleges that notwithstanding any differences in the domain names’ registration records the domain names are nevertheless effectively controlled by the same person or entity. 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.”
The at-issue domain names are registered with the same registrar and are similarly constructed as each domain name contains Complainant’s trademark, includes a geographic term, and concludes with the “.com” top-level. The domain names address websites that are substantially similar or identical to each other and offer footwear bearing Complainant’s SKECHERS trademark. Thus, the at-issue domain names appear more likely than not to be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s contention that the domain names’ registrants may be treated as a single entity is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single Respondent for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, operates in the lifestyle and performance footwear industry.
Complainant has rights in the SKECHERS mark through its registration of the mark with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”).
Respondent’s <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names are each confusingly similar to Complainant’s SKECHERS mark as they each add generic and/or geographic terms and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names Respondent is not commonly known by the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its SKECHERS mark in the at-issue domain names. Respondent does not use the at-issue domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead displays Complainant’s mark and offers suspected counterfeit items for sale.
Respondent registered and uses the <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names in bad faith. Respondent registered the at-issue domain names with constructive and/or actual knowledge of Complainant’s rights in the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SKECHERS trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in SKECHERS.
Respondent uses the at-issue domain names to pass itself off as Complainant and to address websites that offer suspected counterfeit SKECHERS branded products for sale.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with other national trademark registrations for its SKECHERS trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the SKECHERS mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names each contain Complainant’s SKECHERS trademark as well as a geographic term and in two cases other terms i.e. “en” and “tienda”. A hyphen is inserted into one of the domain names. Each domain name concludes with the “.com” top-level domain name. The differences between any of the at-issue domain names and Complainant’s SKECHERS trademark are insufficient to distinguish any of the at-issue domain names from SKECHERS for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names are each confusingly similar to Complainant’s SKECHERS trademark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Cargill, Incorporated v. Sales Office / Cargill Brasil, FA 1737212 (Forum July 21, 2017) (finding the addition of the geographic term “Brasil” does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
The WHOIS information for the at-issue domain names identifies their registrant as “MelanieVogtDE / Deborah Ryan” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any at-issue domain names for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain names address websites that are designed to appear as if authorized by, or otherwise endorsed, by Complainant. Notably, the websites display Complainant’s SKECHERS trademark, images of Complainant’s products, and other features suggestive of SKECHERS products, while offering suspected counterfeit versions of such products for sale. Respondent’s use of the domain names in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). 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.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each at-issue domain names pursuant to Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, circumstance are present which allow the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
Based on the record the Panel finds that Respondent misappropriates Complainant’s trademark to use in its domain names and associated websites and thereby attempts to pass itself off as Complainant. Respondent’s apparent intent is to attract consumers to its commercial website so they might purchase suspected counterfeit SKECHERS products. Respondent’s use of the at-issue domain names to deceive internet users in this manner disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶¶ 4(b)(iii) and/or (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 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, Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); 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 also, 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).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in the SKECHERS trademark. Respondent’s prior knowledge is evident given SKECHERS’ notoriety and its arbitrary nature, and given the fact that Respondent uses the domain names to pass itself off as Complainant and offer suspected counterfeit SKECHERS merchandise as mentioned elsewhere herein. Respondent’s use of the domain names to address websites displaying Complainant’s trademark as well as images of Complainant’s products makes it inconceivable that Respondent was unaware of the SKECHERS trademark when it registered the at-issue domain names. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersenespana.com>, <tiendaskechersargentina.com>, and <turkiye-skechers.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 18, 2023
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