WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Mohammad Ali Silakhory Kardar
Case No. DIR2019-0006
1. The Parties
The Complainants are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II of United States of America (“United States or U.S.”), represented by Kleinbergf & Lerner, LLP, United States (together hereafter “the Complainant”).
The Respondent is Mohammad Ali Silakhory Kardar, Azadi-Jeyhoun-MalekeAshtar-Akhoundzadeh-7, (Islamic Republic of Iran).
2. The Domain Name and Registrar
The disputed domain name <skechersiran.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2019. On May 15, 2019, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On May 18, 2019, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2019. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2019. On June 19, 2019, the Center notified the Respondent’s default.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on June 24, 2019. 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 one of the global leaders in the lifestyle and performance footwear industry, which sells footwear products on a worldwide basis, notably through department stores, specialty stores and independent retailers, whether offline or online. The Complainant also carries out its activities online through its official website “www.skechers.com”.
The Complainant Skechers U.S.A., Inc. II holds numerous trademarks consisting of the word SKECHERS, such as the U.S. word trademark no 1,851,977 that was registered on August 30, 1994 in class 25 of the Nice classification, with a first use in commerce as of February 26, 1993.
On April 22, 2014, the Respondent registered the disputed domain name <skechersiran.ir>. The website associated to the disputed domain name portrays itself as the “Skechers Official Site Iran” and displays both the Complainants’ brand and logo to sell allegedly counterfeit products.
5. Parties’ Contentions
The Complainant first argues that the disputed domain name <skechersiran.ir> is confusingly similar to its trademark SKECHERS as it entirely incorporates its trademark and that the addition of the term “iran”, which is geographically descriptive, does not enable to exclude the likelihood of confusion.
The Complainant further affirms that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, and the Complainant has never authorized the Respondent to use its trademark SKECHERS.
Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith. The website at the disputed domain name <skechersiran.ir> is used to make users believe that the website would be the Complainant’s official website in Iran, so as to sell suspected counterfeit products bearing the Complainant’s brands.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant holds numerous word trademarks throughout the world consisting of the word SKECHERS, whose well known character is undoubtful.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000‑0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002‑0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007‑1629). This is all the more true when the inserted trademark, a well known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a geographical term such as “iran” refers in a fairly obvious manner for Internet users to the geographical origin and, as a result, does not exclude the confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd, WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). Such addition leads Internet users to believe that the disputed domain name would be the Complainant’s official website in Iran.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the UDRP panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the UDRP panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the Complainant is the owner of numerous SKECHERS trademarks. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
There is no doubt in the Panel’s opinion that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, as the website at the disputed domain name is meant to be portrayed as the Complainants’ official website in Iran to sell counterfeit products.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered or Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered or is being used in bad faith (Policy, paragraph 4(a)(iii)).
In the present case, the Complainant is the owner of numerous SKECHERS trademarks, which enjoy a worldwide reputation. Considering the reputation of the Complainant’s trademarks, the Respondent was aware of the Complainant’s trademarks at the time it registered the disputed domain name. As a result, the Panel holds that the disputed domain name was registered in bad faith.
Based upon the overall circumstances of the case, it is very clear that the disputed domain name is being used in bad faith, as the website attached to it, which leads users to believe that it is the Complainant’s official website, reproduces both the complainant’s trademark and logo in order to sell allegedly counterfeit products.
Consequently, the Panel is of the opinion that the disputed domain name <skechersiran.ir> has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
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 <skechersiran.ir> be transferred to the Complainant.
Date: July 5, 2019