WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skechers U.S.A., Inc. II v. Domain Administrator, See PrivacyGuardian.org / Gretchen Aquino
Case No. D2020-0284
1. The Parties
The Complainant is Skechers U.S.A., Inc. II, United States of America (“United States”), represented by D. Young & Co., United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Gretchen Aquino, Canada.
2. The Domain Name and Registrar
The disputed domain name <skechersuk.online> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2020. On February 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 14, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 19, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on March 30, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a member of the Skechers group of companies (“Skechers group”), a multi-billion-dollar global business in the lifestyle and performance footwear industry, established in 1992 in Manhattan Beach, California, United States. Skechers group footwear products are sold in more than 170 countries and territories around the world, in over 3,000 Skechers group retail stores and online through Skechers group website at “www.skechers.com”. Skechers group footwear products are also available through department stores, specialty stores, athletic specialty shoe stores, independent retailers, and Internet retailers worldwide.
The Complainant is a wholly-owned subsidiary of Skechers U.S.A., Inc. The Complainant owns multiple trademark registrations throughout the world for the word trademark SKECHERS, including United States Trademark Registration No. 1,851,977 (registered on August 30, 1994), and United Kingdom Trademark Registration No. 2143082 (filed on August 27, 1997; entered in the Register on February 20, 1998).
The Complainant and companies in Skechers group are registrants of a significant portfolio of domain names incorporating the SKECHERS trademark, including <skechers.co.uk>, <skechers.com.au>, and <skechers.com.hk>.
The disputed domain name was registered on October 22, 2019. The Complainant has provided screenshots of the website resolving from the disputed domain name on February 4, 2020, at which was offered a range of footwear for sale. The Complainant has also provided screenshots of the website resolving from the disputed domain name on October 25, 2019 (a few days after the disputed domain name was registered), at which was displayed the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights because: (i) it includes the SKECHERS trademark in its entirety; (ii) the inclusion of a geographic term, namely the country abbreviation “uk”, does not remove the disputed domain name from the realm of confusing similarity as the SKECHERS trademark is clearly recognizable within the disputed domain name; and (iii) the addition of the generic Top-Level Domain (gTLD) “.online” does not avoid confusion, as it is a standard registration requirement and should therefore be disregarded for the purposes of assessing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the disputed domain name was registered on October 22, 2019, over 25 years after Skechers group registered and began using the SKECHERS trademark; (ii) SKECHERS is an arbitrary term which has no meaning outside its use as a means to identify Skechers group as a source of the relevant products; (iii) the Respondent is not a licensee, authorized retailer or distributor of Skechers group products, and is not authorized to use the name or the SKECHERS trademark for any purpose, and has no connection or affiliation with Skechers group; (iv) upon information and belief, the Respondent is not commonly known by the disputed domain name; (v) the Respondent is not making use of the disputed domain name in connection with a bona fide offering of goods and services, or a legitimate noncommercial or fair use of the disputed domain name, given that the Respondent is using it to gain commercially by falsely suggesting an affiliation with Skechers group; (vi) the disputed domain name resolves to a website which offers for sale footwear in direct competition with Skechers group, and the inclusion of the SKECHERS trademark in the disputed domain name indicates that the Respondent is seeking reputational and bargaining advantage to promote its own products by free-riding on the strong market position and reputation of Skechers group; (vii) in the past, the Respondent used the disputed domain name to gain commercially from the sale of counterfeit Skechers group products, and there is a risk that the Respondent might attempt to do so again in the future; and (viii) the Respondent has used multiple logos and promotional images, without authorization and in breach of the Complainant’s copyright, and unsuspecting consumers may have been duped into believing that the Respondent’s website was an official Skechers group website and the products displayed there were genuine Skechers group products.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent knowingly registered the disputed domain name containing an exact reproduction of the well-known SKECHERS trademark to capitalize on consumer recognition of the SKECHERS trademark; (ii) the fact that the Respondent is using the disputed domain name in connection with a website that is currently selling third-party products and was, until recently, selling counterfeit SKECHERS-branded shoes and making unauthorized use of Skechers group promotional materials, indicates that the Respondent has actual knowledge of the Complainant and Skechers group business; (iii) the SKECHERS trademark is both famous and obviously connected to Skechers group, including the Complainant, such that the Respondent’s registration and use of the disputed domain name per se amounts to bad faith; (iv) the unauthorized use of Skechers group promotional images and logos on the website resolving from the disputed domain name, in breach of copyright, are further evidence of bad faith; (v) the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondent devised the term on its own; (vi) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website resolving from the disputed domain name, by creating a likelihood of confusion with the Complainant’s famous SKECHERS trademark as to the source, affiliation or endorsement of the website and the products sold on the website, since it is active and offers for sale footwear (and in the past counterfeit SKECHERS-branded footwear); and (vii) the Respondent has been engaging in a pattern of bad faith conduct preventing trademark holders from reflecting their marks in domain names, having been involved in at least three unsuccessful complaints under the Policy involving famous companies in the shoe and luxury goods industries.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the gTLD “.online” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark SKECHERS followed by the letters “uk”. The Complainant’s word trademark SKECHERS is the dominant element of the disputed domain name. The addition of the letters “uk”, which Internet users are likely to read as being an initialism of “United Kingdom”, does not lessen the confusing similarity of the disputed domain name with the Complainant’s word trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its SKECHERS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name is being used to resolve to a website offering for sale footwear, in competition with the Complainant’s area of business. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered more than 25 years after the Complainant first registered its SKECHERS trademark. The evidence on the record provided by the Complainant with respect to the use of its SKECHERS trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <skechersuk.online> be transferred to the Complainant.
Andrew F. Christie
Date: April 13, 2020