The Complainants are Skechers U.S.A. Inc. and Skechers U.S.A., Inc. II of Manhattan Beach, California, United States of America (together and in singular "Complainant"1), represented by Kleinberg & Lerner, LLP, United States of America.
The Respondent is Frank Uittenbogaard of Tuil, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name ("Domain Name") is registered with SIDN through Gandi SAS ("Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 6, 2017. On the same date, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On the same date, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 proceeding commenced on January 10, 2017. In accordance with the Regulations, article 7.1, the due date for Response was January 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 31, 2017. The Respondent sent an email communication to the Center on February 1, 2017.
The Center appointed Willem J.H. Leppink as the panelist in this matter on February 8, 2017. 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 a large global player in the lifestyle and performance footwear industry. The Complainant's footwear products are sold in more than 160 countries around the world. The trademark SKECHERS is the Complainant's house mark, which appears on various products and in the Complainant's marketing and promotion. Also, the Complainant has been publicly traded on the New York Stock Exchange under the symbol SKX since 1999.
The Complainant is the owner of a substantial number of registrations for SKECHER trademarks throughout the world, including but not limited to a Benelux registration no. 525508, filed on January 27, 1993 and registered for goods in class 25 including footwear, t-shirts, socks and hats ("Trademark").
The Domain Name was first registered on October 21, 2002. The Domain Name resolves to the Registrar's standard parking page. 5. Parties' Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Domain Name is confusingly similar to the Trademark because the Domain Name includes the Trademark in its entirety along with the country-code Top-Level Domain ("ccTLD") ".nl".
The Respondent has no rights to or legitimate interests in respect of the Domain Name. The Respondent is not commonly known by the Domain Name. The Respondent is not an authorized retailer or distributor of the Complainant's products. The Respondent is not authorized to use the Complainant's name or the Trademark.
The Complainant submits that SIDN's public WhoIs database does not list the registrant's name. Following a request from the Complainant, SIDN released the WhoIs information to the Complainant on December 2, 2016, showing the Respondent as the registrant of the Domain Name. The Complainant concludes that there is no evidence in the record to suggest that the Respondent was commonly known by the Domain Name.
The Respondent's use of the Domain Name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use; the Domain Name merely resolves to a parking page.
The Respondent offered to sell the Domain Name to the Complainant for EUR 8,000. Under the Regulations an offer to sell a domain name for valuable consideration in excess of any documented out-of-pocket costs directly related to a domain name is not only evidence of, but conclusively establishes that, such domain name has been registered and is being used in bad faith. B. Respondent
The Respondent did not submit a response in accordance with the requirements of article 7 of the Regulations. After the Center notified the Respondent's default on January 31, 2017, the Respondent sent an email communication to the Center on February 1, 2017.
In this communication the Respondent states that it registered the Domain Name in 2002. According to the Respondent it registered the Domain Name in good faith. The Respondent states that he has plans with the Domain Name unrelated to the SKECHERS brand and that he has made investments to this end. He furthermore states that he had been advised by his legal advisor that he has a strong case.
Finally, the Respondent states that he is willing to cancel his plans and offers to settle for EUR 900. 6. Discussion and Findings
Pursuant to article 2.1 of the Regulations the Complainant must prove each of the following three elements:
a. the Domain Name is identical or confusingly similar to:
I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or
II) a personal name registered in the General Municipal Register ("Gemeentelijke Basisadministratie") of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and
b. the Respondent has no rights to or legitimate interests in the Domain Name; and
c. the Domain Name has been registered or is being used in bad faith.
As the Respondent has not filed a response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact. The Panel will, however, take into account the email communication the Respondent has sent after the deadline expired. A. Identical or Confusingly Similar
Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the Complainant has rights.
The Complainant has submitted a copy of its Benelux trademark registration certificate showing that it is the holder of the Trademark, which is valid under Dutch law.
The Panel finds that the Domain Name is identical to the Trademark as the Domain Name incorporates the Trademark in its entirety. It is established case law that the ccTLD may usually be disregarded in the confusing similarity test under the Regulations.
The Complainant has established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests
Pursuant to article 2.1 of the Regulations, the Complainant must demonstrate that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant must make out a prima facie case that the Respondent lacks rights to or legitimate interests in the Domain Name. If a prima facie case is made out, then the burden of production of evidence shifts to the Respondent.2 The Respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:
a. before having any notice of the dispute, the [Respondent] made demonstrable preparations to use the Domain Name (or a name corresponding to the Domain Name) in connection with a bona fide offering of goods or services;
b. the [Respondent] as an individual, business or other organization is commonly known by the Domain Name;
c. the [Respondent] is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.
The Complainant asserts that the Respondent has no rights to or legitimate interests in the Domain Name for the reasons listed under Section 5.A above. Noting also the Complainant's submission that the Respondent has not been authorized to use the Trademark, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
The Respondent states that he has registered the Domain Name in 2002, and claims to have "concrete plans with the domain name and in the past years made investments into this idea". The Panel notes however that the Respondent has not submitted any evidence to demonstrate preparations to use the Domain Name, let alone in connection with a bona fide offering of goods or services. Indeed, the Respondent fails to indicate any registration purpose unrelated to the Trademark which the Respondent chose to incorporate in full in the Domain Name.
There is no evidence before the Panel that the Respondent is commonly known by the Domain Name or that he has actually used the Domain Name, including for legitimate noncommercial purposes.
The Respondent not having refuted the Complainant's prima facie case, the Panel concludes that the Respondent has not shown any rights to or legitimate interests in the Domain Name.
The Complainant has thus established the second element of article 2.1 of the Regulations. C. Registered or Used in Bad Faith
The Complainant has made a prima facie case that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or transferring it to the Complainant (or to the Complainant's competitors) for valuable consideration in excess of the cost of registration.
The record before the Panel suggests that the Respondent's initial demand of EUR 8,000 in fact followed a query by the Complainant. Depending on the circumstances of the case, such a reaction from a registrant by itself need not be an indication of bad faith. However, this cannot help the Respondent in the present case, who has failed to provide any evidence of bona fide intentions with a domain name that corresponds to a (in light of the evidence filed by the Complainant, well-known) third-party trademark, and who instead has used this proceeding to affirm financial demands.
Noting also that the registration of the Trademark predates the registration of the Domain Name by almost ten years, the Panel considers it highly likely that the Respondent was aware of the Complainant's existence and rights when it registered the Domain Name.
In light also of its considerations under Section 6.B above, the Panel finds that the Complainant has established the third element of article 2.1 of the Regulations. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that Domain Name, , be transferred to the Complainant Skechers U.S.A., Inc. II.
Willem J.H. Leppink
Panelist
Date: February 15, 2017
1 The Panel will not distinguish between the two Complainants unless there is a specific reason for doing so.
2 See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). While the Complaint is brought under the Regulations and not the Uniform Domain Name Dispute Resolution Policy ("UDRP"), given the similarities between the two, where applicable the Panel considers UDRP precedent and the WIPO Overview 2.0 relevant to the current proceeding.
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