The Complainants are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, United States of America (“United States”), represented by Kleinberg & Lerner, LLP, United States.
The Respondent is Obeirg Melikssa, Germany. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2021. On the same day, the Center transmitted by email to SIDN a request for registrar verification in connection with the Disputed Domain Name. On March 11, 2021, SIDN 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. In response to a request by the Center that the Complaint be amended to reflect the information disclosed by SIDN, the Complainants filed an amended Complaint on March 17, 2021. 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 March 23, 2021. In accordance with the Regulations, article 7.1, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021. The Center appointed Thijs van Aerde as the panelist in this matter on May 4, 2021. 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 Complainants are a lifestyle and performance footwear company with products being sold in more than 170 countries and territories around the world. The Complainants have been using the SKECHERS trademark in connection with footwear and related retail services since 1993 and are listed on the New York Stock Exchange under the ticker symbol “SKX” since 1999. The Complainants hold a number of trademark registrations worldwide including: - Benelux trademark SKECHERS, registered on August 1, 1993, registration no. 0525508; hereinafter jointly referred to as the “Trademarks”. According to the information provided by SIDN, the Respondent registered the Disputed Domain Name on January 25, 2021. At the time of this Decision, the Disputed Domain Name was inactive. However, according to the evidence annexed to the Complaint, the Disputed Domain Name previously resolved to a website mimicking the Complainants’ official website and offering for sale the Complainants’ products. 5. Parties’ Contentions A. Complainants The Complainants contend that the Disputed Domain Name is identical to the Trademarks. The Complainants assert that the Respondent is not authorized to use the Trademarks. Furthermore, the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods and services, therefore lacking any rights or legitimate interests in the Disputed Domain Name. The Complainants contend that the Respondent registered and is using the Disputed Domain Name to sell unauthorized and possibly counterfeit Skechers products, which must be considered bad faith under the Regulations. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings Pursuant to article 2.1 of the Regulations the Complainants must prove each of the following three elements: a. the Disputed Domain Name is identical or confusingly similar to: I) a trademark or trade name protected under Dutch law in which the Complainants have 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 Complainants undertake public activities on a permanent basis; and, b. the Respondent has no rights to or legitimate interests in the Disputed Domain Name; and, c. the Disputed 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. A. Identical or Confusingly Similar The Complainants established that they have rights in the Trademarks. The Disputed Domain Name is confusingly similar to the Trademarks as it incorporates the term “skechers” in its entirety, in addition to the term “nederland” (Dutch for “the Netherlands”). According to section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 , where the relevant trademark is recognizable within the disputed domain name, the addition of, e.g.,a geographical term would not prevent a finding of confusing similarity under the first element. The Panel finds the Disputed Domain Name to be confusingly similar to the Trademarks, noting that the country code Top-Level Domain “.nl” may be disregarded when assessing the similarity between the domain name on the one hand, and the relevant trademark on the other hand (see, Roompot Recreatie Beheer B.V. v. Edoco LTD,WIPO Case No. DNL2008-0008). The Complainants have established the first element of article 2.1 of the Regulations. B. Rights or Legitimate Interests Under the Regulations, a respondent generally is in the best position to demonstrate rights or legitimate interests in a domain name. Section 2.1 of WIPO Overview 3.0 sets out that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. In the present case, the Complainants have made such a prima facie case by showing prior rights which long precede the Respondent’s registration of the Disputed Domain Name. Furthermore, the Complainants have demonstrated that the Respondent has used the Disputed Domain Name for purposes which do not represent a bona fide offering of goods or services. Specifically, the Complainants have brought forward evidence showing that the Respondent previously used the Disputed Domain Name for a website which, by mimicking the Complainants’ website, falsely suggests it is the Complainants’ official web shop in the Netherlands. A screenshot of the website to which the Disputed Domain Name previously resolved not only depicts the Trademarks and the Complainants’ corporate identity, but also includes various images directly copied from the Complainants’ official website. There is no indication that the Respondent was commonly known by the Disputed Domain Name, and there is no evidence that the Respondent can be considered a genuine reseller. Rather, the circumstances in the present case essentially correspond to those in the following cases: “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Katja Braun’s nets,WIPO Case No. DNL2016-0060; Coccinelle S.p.A v. Kaoyuanws Trade,WIPO Case No. DNL2017-0008; and Score Retail Nederland B.V. v. Anke Eisenhower soho,WIPO Case No. DNL2017-0034, in which the respondents all registered domain names incorporating the trademarks of well-known companies in the apparel industry. These domain names led to websites impersonating the respective complainants and potentially providing Internet users with counterfeit products. Lastly and likewise, these cases all included defaulting respondents with fictitious physical addresses in Germany. With reference to the considerations set out in this precedent, the Panel concludes that the Complainants have satisfied the requirement of article 2.1(b) of the Regulations. C. Registered or Used in Bad Faith Based on the Panel’s findings in Section 6.B above, more particularly the Respondent’s registration and use of the Disputed Domain Name for a website that aims to mislead Internet users into believing they are dealing with the Complainants, the Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith. Consequently, the requirement of article 2.1(c) of the Regulations has also been met. 7. Decision For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name Thijs van Aerde 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 both cases decided under the Regulations and cases decided under the UDRP, and therefore WIPO Overview 3.0, are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V.,WIPO Case No. DNL2008-0050).
- European Union Trade Mark SKECHERS, registered on April 12, 2006, registration no. 004307691;
- German trademark SKECHERS, registered on December 17, 2002, registration no. 30165142;
Panelist
Date: May 18, 2021
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