WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skechers U.S.A., Inc., Skechers U.S.A. II v. Max Adler

Case No. DNL2019-0036

1. The Parties

The Complainant is Skechers U.S.A., Inc. and Skechers U.S.A. II, United States of America, represented by Kleinberg & Lerner, LLP, United States of America.

The Respondent is Max Adler, Germany.

2. The Domain Name and Registrar

The disputed domain name <skecherskorting.nl> (the “Domain Name”) is registered with SIDN through PDR Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On September 10, 2019, SIDN transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2019, 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 September 14, 2019. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2019. In accordance with the Regulations, article 7.1, the due date for Response was October 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2019.

The Center appointed Wolter Wefers Bettink as the panelist in this matter on October 14, 2019. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is active in the lifestyle and performance footwear industry and its footwear products are sold in more than 170 countries and territories around the world in over 3,000 Skechers retail stores, online through its website “www.skechers.com”, and through department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide. The Complainant is listed on the New York Stock Exchange under the ticker symbol “SKX” since 1999.

The Complainant owns a number of trade mark registrations worldwide, consisting of or containing the term “skechers” in connection with footwear and apparel and related retail services, including:

- Benelux trade mark SKECHERS, registered on January 27, 1993, under No. 0525508;

- German trade mark SKECHERS, registered on December 17, 2002, under No. 30165142;

- German trade mark SKECHERS, registered on March 4, 2004, under No. 30405697;

hereafter together referred to as the “Trade Marks”.

The Domain Name was registered on June 10, 2019, and resolves to a website offering shoes for sale under the name “skechers”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Domain Name is identical to and confusingly similar with the Trade Marks as it incorporates the mark SKECHERS in its entirety, whereas the Dutch word “korting” (which translates as “discount” in English) is descriptive and the country code Top-Level Domain (“ccTLD”) “.nl” is generally disregarded under the confusing similarity test.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the Domain Name since the Respondent (i) is not commonly known by the Domain Name; (ii) is not an authorized retailer or distributor of the Complainant’s products; and (iii) is not otherwise authorized to use the Complainant’s name or the Trade Marks. In addition, the Complainant contends that the Respondent's website prominently displays the mark SKECHERS along with photographs of suspected counterfeit products bearing the Trade Marks. The Complainant states that as a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent’s website are genuine products of the Complainant.

The Complainant further submits that the very nature of the registration of the Domain Name evidences bad faith since, upon information and belief, the Respondent knowingly registered the Domain Name containing an exact reproduction of the Trade Marks to capitalize on consumer recognition of the Trade Marks. In addition, the Complainant states, the fact that the Respondent is using the website under the Domain Name to sell footwear bearing the Trade Marks indicates that the Respondent had at least constructive knowledge of the Trade Marks and the Complainant’s business when it registered the Domain Name well after the registration of the Trade Marks. Moreover, the Complainant points out, the mark SKECHERS of which the Trade Marks consist is unique and arbitrary such that it is unlikely the Respondent devised the term on its own. According to the Complainant, these bad faith allegations combined with the Respondent’s lack of rights or legitimate interests in the Domain Name imply that there is no plausible circumstance under which the Respondent could legitimately register or use the Domain Name.

Therefore, the Complainant concludes, the Domain Name was registered and is being used by the Respondent in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has shown that it has registered rights in the Trade Marks. The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark SKECHERS in its entirety (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)¹, section 1.7). According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (i.e. the descriptive term “korting”) would not prevent a finding of confusing similarity under the first element. The ccTLD “.nl” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 3.0, section 1.2).

Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights.

B. Rights or Legitimate Interests

Under article 3.1 of the Regulations, the Complainant has to make out a prima facie case that the Respondent does not have rights to or legitimate interests in the Domain Name upon which the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights to or legitimate interests in the Domain Name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name and that it is not an authorized retailer or distributor of the Complainant’s products or otherwise authorized to use the Trade Marks. The Respondent has not provided evidence, nor is there any indication in the record of this case that that the Respondent is commonly known by the Domain Name (article 3.1(b) of the Regulations).

While this is not strictly necessary (see, “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Katja Braun’s nets, WIPO Case No. DNL2016-0060 and Coccinelle S.p.A v. Kaoyuanws Trade, WIPO Case No. DNL2017-0008), the Panel adds that the Respondent’s use of the Domain Name in relation to a website selling the Complainant’s products bearing the Trade Marks (i.e. as a possible reseller or distributor of such products) may qualify as a bona fide offering of goods or services, in accordance with article 3.1 (a) of the Regulations, only if such use would satisfy the following conditions (see, Oki Data Americas, Inc., v. ASD, Inc., WIPO Case No. D2001-0903):

(1) the respondent must actually be offering the goods or services at issue;

(2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trade mark in a domain name to bait consumers and then switch them to other goods);

(3) the site itself must accurately disclose the respondent’s relationship with the trade mark owner; and

(4) the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trade mark owner of the ability to reflect its own mark in a domain name.

The website to which the Domain Name resolves does not contain a specific disclaimer in relation to the Complainant, nor does it specifically disclose the Respondent’s relationship with the Complainant. For this purpose it is not sufficient that the website makes no explicit representation that it is the Complainant’s, as that leaves open the possibility that an Internet user typing in the Domain Name and viewing the website to which it resolves could be left with the impression that there is some commercial or legal relationship with the Complainant, when this is clearly not the case.

As the Respondent therefore has not demonstrated that it meets all the criteria of the Oki Data decision, the Respondent’s use of the Domain Name prior to the notice of the dispute cannot be considered to be in connection with a bona fide offering of goods or services, in accordance with article 3.1 of the Regulations.

The Panel concludes that Complainants have met the second requirement of article 2.1(b) of the Regulations.

C. Registered or Used in Bad Faith

In accordance with article 3.2 of the Regulations, the Complainant has to show that the Domain Name was registered or is being used in bad faith.

Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was aware of and indeed specifically targeted the Complainant and the Trade Marks. In particular, such knowledge and intent is derived from the following facts: (i) the Respondent’s registration of the Domain Name occurred 26 years after the registration of the Trade Marks; (ii) the Trade Marks have since 2002 been registered in Germany, where the Respondent appears to be located; (iii) the element SKECHERS of which the Trade Marks consists, is incorporated in its entirety in the Domain Name, and does not appear to be a name of which the Respondent was likely to spontaneously or accidentally think; (iv) a simple trade mark register search, or even an Internet search, prior to registration of the Domain Name would have informed the Respondent of the existence of the Trade Marks; (v) the Respondent did not file a Response; and (vi) the Respondent has used the Domain Name for a website that prominently features the Complainant’s Trade Marks and purports to offer the Complainant’s products for sale.

Noting also its considerations under section 6B above, the Panel finds that the Respondent has registered and used the Domain Name to impersonate the Complainant and to confuse Internet users into believing that the website is associated with or authorised by the Complainant.

The Panel concludes that the Domain Name has been registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <skecherskorting.nl> be transferred to the Complainant.

Wolter Wefers Bettink
Panelist
Date: October 29, 2019

¹ In view of the fact that the Regulations are to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).