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 Mohammadreza Hashemi, Islamic Republic of Iran (“Iran”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2020. On August 28, 2020, the Center transmitted by email to IRNIC a request for verification in connection with the Disputed Domain Name. On August 30, 2020, IRNIC 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 .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 September 8, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2020. On September 29, 2020, the Center notified the Respondent’s default. The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 13, 2020. 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 Complainants are part of a multi-billion-dollar group which is active in the lifestyle and performance footwear industry. The Complainants’ products are sold in more than 170 countries and territories around the world in over 3,550 retail stores and online. The Complainants have been using the SKECHERS trade mark in connection with footwear and apparel and related retail services since 1993. The SKECHERS trade mark is the house mark of the Complainants that appears on the Complainants’ products. The Complainant is the owner of numerous trade mark registrations for the SKECHERS mark in various jurisdictions, including, inter alia, the SKECHERS trade mark (Reg. No. 1851977) registered on August 30, 1994 in the United States, and the SKECHERS trade mark (Reg. No. 1523265) registered on May 27, 1994 in the United Kingdom. The Complainants also own and operate the domain name The Respondent registered the Disputed Domain Name on May 26, 2019 and it currently resolves to an online shop in Persian language, offering the Complainants’ products. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Complainants are the registered owners of the SKECHERS trade mark and have been using the SKECHERS trade mark prominently and extensively for over 25 years. The Disputed Domain Name is confusingly similar to the Complainants’ SKECHERS trade mark, which has been wholly incorporated into the Disputed Domain Name. The addition of “tehran”, which is a geographic term, does nothing to remove the confusing similarity between the Disputed Domain Name and the Complainants’ SKECHERS trade mark; (b) The Respondent registered the Disputed Domain Name long after the Complainants’ use and registration of the SKECHERS trade mark, which is an arbitrary term with no dictionary meaning. The Complainants have never authorized or given permission to the Respondent, who is not associated with the Complainants in any way, to use its SKECHERS trade mark. The Respondent was not commonly known by the Disputed Domain Name. The website to which the Disputed Domain Name resolves is used by the Respondent to sell suspected counterfeit SKECHERS products. The Respondent’s use of the Disputed Domain Name does not create any right or legitimate interest in the Disputed Domain Name; and (c) The Complainants’ SKECHERS trade mark is well-known throughout the world and received registration in 1994, which predates the creation of the Disputed Domain Name. The Respondent must have been aware of the Complainants’ SKECHERS trade mark at the time of registration of the Disputed Domain Name. The Complainants’ SKECHERS trade mark is also unique and arbitrary which makes it unlikely that the Respondent had devised the term on its own. As such, the Disputed Domain Name was registered and has been used by the Respondent in bad faith. B. Respondent The Respondent did not reply to the Complainants’ contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403).1 6. Procedural Issues The Complainants seek the transfer of the Disputed Domain Name, but they do not specify to which of the Complainants the Disputed Domain Name should be transferred if they are successful in their action. If there are multiple complainants and more than one of them has an entitlement to the trademarks on which the complaint is based, but the complainants have not specified in the complaint to which of them the disputed domain name should be transferred, then it should be left to the complainants to inform the registrar of their wishes (“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox,WIPO Case No. D2011-1142; and Zee Telefilms Ltd. and Wimpole Holdings Ltd. (presently known as Zee Multimedia Worldwide Ltd.) v. Rahul Dholakia and Oznic.com,WIPO Case No. D2001-0624; and Asprey & Garrard Limited and Garrard Holdings Limited v. www.24carat.co.uk/domainnames.html,WIPO Case No. D2001-1501). In this case, since the Complaints do not specify to which of the Complainants the transfer of the Disputed Domain Name should be made, if the Complainants are successful, an order should be made by the Panel for the transfer of the Disputed Domain Name to at least one of the Complainants – with the choice of which one to be determined by them (“Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox,WIPO Case No. D2011-1142). 7. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or 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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainants have rights in the SKECHERS trade mark, based on their various trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country code Top-Level Domain extension (“ccTLD”) (“.ir” in this case) is generally disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainants’ SKECHERS trade mark in its entirety with the addition of the term “tehran”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0. The mere addition of the geographical term “tehran” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainants’ SKECHERS trade mark. The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s SKECHERS trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainants have not authorised the Respondent to use the SKECHERS trade mark, and there is no relationship between the Complainants and the Respondent, which would otherwise entitle the Respondent to use the SKECHERS trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainants’ evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to a website that sells suspected counterfeit SKECHERS-branded products. The Panel agrees with the Complainants that such use of the Disputed Domain Name for selling suspected counterfeit SKECHERS-branded products gives an impression that the Disputed Domain Name is associated with and/or endorsed by the Complainants and does not constitute a bona fide offering of goods and services. In addition, the Panel notes the composition of the Disputed Domain Name, where the addition of the word “tehran” creates an impression that the Disputed Domain Name resolves to the Complainants’ official website in Tehran, Iran. There is also no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name. Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate noncommercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. The Complainants’ SKECHERS trade mark appears to be fairly well-known. The Panel accepts the Complainants’ argument that the Respondent must have been aware of the Complainants and their rights in the SKECHERS trade mark when registering the Disputed Domain Name. As such, the fact that the Disputed Domain Name incorporates the Complainants’ SKECHERS trade mark in its entirety creates a presumption of bad faith. In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith: (i) the Respondent failed to respond to the Complainants’ contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; (ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainants’ SKECHERS trade mark, and that the website to which the Disputed Domain Name resolves is used to sell suspected counterfeit SKECHERS-branded products; and (iii) any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with and/or endorsed by the Complainants, particularly given that the Disputed Domain Name is almost identical to the Complainants’ registered domain name In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 8. Decision 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 Gabriela Kennedy 1 Noting the substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases and its doctrine, where appropriate.
Sole Panelist
Date: October 27, 2020
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