WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skechers U.S.A., Inc. II v. Christin Koertig
Case No. D2021-4175
1. The Parties
The Complainant is Skechers U.S.A., Inc. II, United States of America (“United States”), represented by D Young & Co LLP, United Kingdom (“UK”).
The Respondent is Christin Koertig, Germany.
2. The Domain Name and Registrar
The disputed domain name <skecherstrainersuk.com> is registered with NETIM SARL (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2021, 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 December 20, 2021 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 December 20, 2021.
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 January 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2022.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on February 16, 2022. 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 owns numerous trademark registrations for SKECHERS in relation to footwear and other goods, inter alia in the United States, the United Kingdom and the European Union (“EU”), including SKECHERS in the United States, No. 1,851,977, registered on April 30, 2022; SKECHERS in the United Kingdom No. UK00002143082, registered on February 20, 1998; UK00002278796, registered on February 8, 2002; UK00002320226, registered on June 13, 2003; and SKECHERS in the European Union Nos. 002992535, registered on September 29, 2004; 004307691, registered on April 12, 2006; 007421746, registered on July 16, 2009; 008706806, registered on May 4, 2010; 008827487, registered on July 13, 2010, and 014466131, registered on December 12, 2015.
In addition, the Complainant asserts that it has valuable goodwill in the form of unregistered rights in the SKECHERS brand in the UK, the EU and throughout the world. It also has registered and uses the domain names <skechers.com>; <skechers.co.uk>; <skechers.de>; and <skechers.ru>, amongst others.
The disputed domain name was registered on June 19, 2021 and resolves to a website on which suspected counterfeit SKECHERS goods are offered for sale.
5. Parties’ Contentions
The Complainant points out that it has extensively used, promoted, and advertised the SKECHERS trademarks through celebrity-driven endorsement campaigns and sponsorship of sporting events. It has received many trade accolades relating to its footwear.
The Complainant contends that the disputed domain name is confusingly similar to its SKECHERS trademark. It points out that the disputed domain name contains its trademark in its entirety, and says that in cases where this is so, the domain name will normally be considered confusingly similar to the relevant trademark for purposes of the UDRP. The inclusion of a geographical term and the descriptive word “trainers” does not detract from this conclusion, according to the Complainant.
The Complainant also points out that the Respondent registered the disputed domain name over 25 years after the Complainant or its predecessors in title registered and began using the SKECHERS trademark. It asserts that SKECHERS is an arbitrary term, which has no meaning other than to identify Skechers as a source of marked products.
The Respondent is not a licensee, authorized retailer, or distributor of Skechers’ products. Nor has the Complainant in any way authorized the Respondent to use the name or the SKECHERS trademark for any purpose. The Respondent does not have any connection or affiliation with the Complainant. Further, no information of which the Complainant is cognizant indicates that the Respondent was known by the disputed domain name. Thus, the disputed domain name falsely suggests some affiliation with the Complainant, which does not in fact exist.
The Complainant also submits that the Respondent is using the disputed domain name for commercial gain, as it reverts to a website that offers for sale footwear under the SKECHERS mark that does not originate from the Complainant. The Complainant also says that on the relevant website, the Respondent uses the SKECHERS trademark and logos and promotional images, the copyright in which is owned or exclusively licensed to the Complainant. The Respondent does this without authorization and in breach of copyright. The Complainant points out that there can be no legitimate interest in the sale of counterfeit goods.
The Complainant also asserts that it is engaged in the business of designing, developing, and marketing footwear and apparel products. The fact that the Respondent chose to register an exact reproduction of the Complainant's unique and distinctive SKECHERS trademark and is using it in connection with a website that is currently selling suspected counterfeit products, and making unauthorized use of Skechers promotional materials, indicates that the Respondent has actual knowledge of the Complainant and its business and is using the disputed domain name in bad faith.
The Complainant further submits that the SKECHERS trademarks are both famous and obviously connected to the Skechers group of companies, including the Complainant, and that the Respondent’s registration and use of SKECHERS amounts to per se bad faith. The Complainant adds that the unauthorized use of Skechers’ promotional images and logos on its website, in breach of copyright, are further evidence of bad faith.
To conclude, the Complainant asserts that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website which the disputed domain name reverts to, by creating a likelihood of confusion with the Complainant’s SKECHERS trademark as to the source, affiliation or endorsement of the website and the products sold on the website since the website is active and offers for sale footwear under the SKECHERS mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the SKECHERS trademark of the Complainant. However, that trademark is contained in its entirety within the disputed domain name. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The addition of the terms “trainers” and “uk” do not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s SKECHERS trademark.
B. Rights or Legitimate Interests
There is nothing before the Panel that indicates that the Respondent has rights or legitimate interests in the disputed domain name. The latter has not responded to any of the contentions of the Complainant or in any way asserted that it has rights or legitimate interests.
The Complainant points out that the website to which the disputed domain name resolves sells suspected counterfeit SKECHERS marked goods. The website uses marks and copyright material that the Respondent is not entitled to reproduce, as he has no authorization or license from the Complainant to do so. The Respondent is not known by the disputed domain name or the Complainant’s trademark. As the Complainant points out, using a domain name for the purpose of offering suspected counterfeit goods for sale can never confer rights or legitimate interests on the Respondent..
In any case, irrespective of whether the products at the disputed domain name are counterfeit or not, the disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the terms “trainers” and “uk”. The Panel finds that the composition of the disputed domain name carries a risk of implied affiliation with the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
Therefore, the Panel holds 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 incorporates the Complainant’s distinctive trademark and is clearly constructed and composed with knowledge of the Complainant and the goodwill that vests in its brands. The reputation and trademark registrations of the Complainant long predate the date of registration of the disputed domain name. The website to which the disputed domain name resolves incorporates copyright materials and trademarks of the Complainant, without any supporting authorization or license. The Respondent is in no way affiliated with the Complainant and what is more, he offers suspected counterfeit versions of the Complainant’s goods for sale via the website to which the disputed domain name resolves.
Even if the products are not counterfeit versions of Complainant’s goods, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4). Therefore, the Panel holds that the disputed domain name was 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 <skecherstrainersuk.com> be transferred to the Complainant.
William A. Van Caenegem
Date: March 2, 2022