Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. tinda candy / linatoto totoshop / tinato saleonlien / cocoto lianda / lin yi / chenzhi
Claim Number: FA2204001993724
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, California, USA. Respondent is tinda candy / linatoto totoshop / tinato saleonlien / cocoto lianda / chenzhi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <auskechersale.com>, <skecheroffsale.com>, <skecherstosales.com>, <skecherussale.com>, <skechoutletsusa.com>, and <usaskechersshops.com> registered with Xiamen 35.Com Technology Co., Ltd.; Dynadot, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2022; the Forum received payment on April 25, 2022.
On April 28, 2022; May 9, 2022, Xiamen 35.Com Technology Co., Ltd.; Dynadot, LLC confirmed by e-mail to the Forum that the <auskechersale.com>, <skecheroffsale.com>, <skecherstosales.com>, <skecherussale.com>, <skechoutletsusa.com>, and <usaskechersshops.com> domain names are registered with Xiamen 35.Com Technology Co., Ltd.; Dynadot, LLC and that Respondent is the current registrant of the names. Xiamen 35.Com Technology Co., Ltd.; Dynadot, LLC has verified that Respondent is bound by the Xiamen 35.Com Technology Co., Ltd.; Dynadot, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 12, 2022, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 1, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@auskechersale.com, postmaster@skecheroffsale.com, postmaster@skecherstosales.com, postmaster@skecherussale.com, postmaster@skechoutletsusa.com, postmaster@usaskechersshops.com. Also on May 12, 2022, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and the two are in privity with each other.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the domain names are under common control as the websites displayed at these domains name are very similar, they all contain the same layout and design elements, and are all offering, without authorization or approval, footwear bearing the Complainant's SKECHERS trademark; they also feature a nearly identical "Contact Us" page. Further, four of the domain names were registered with the same registrar, while the other two were registered with a different registrar. This is sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
Consequently, the Panel will rule on all the contested domain names, and the registrants are collectively referred to as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Registration Agreement for two of the disputed domain names is written in Chinese, thereby making the language of the proceedings Chinese for those two domain names.
Pursuant to UDRP Rule 11(a), the Panel has the authority to determine a different language for the proceedings, having regard to the circumstances of the case. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Pursuant to Rule 10(b), Respondent must be given a fair opportunity to present its case. Pursuant to Rule 10(c), the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
In the present case, the resolving websites are in English; Respondent has received the Notice of Complaint and Commencement Notification in Chinese and has chosen not to respond to the Complaint. Pursuant to Rule 11(a), having regard to the circumstances of the case, the Panel determines that fairness and justice to both parties, and due expedition, are best satisfied by conducting the remainder of the proceedings in English. See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017); see also UBS AG v. ratzel laura, FA 1735687 (Forum July 14, 2017).
A. Complainant
Complainant states that it is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant's footwear products are sold in more than 170 countries and territories around the world through over 3,550 Skechers retail stores and online through its website <www.skechers.com>. Complainant's products are also available through department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide. Complainant has rights in the SKECHERS and SKECH marks through their registration in the United States in, respectively, 1995 and 2020. The marks are also registered elsewhere around the world, including in Australia, and they are well known.
Complainant alleges that the disputed domain names are identical or confusingly similar to its marks as they either incorporate the SKECHERS mark in its entirety, or a misspelling of the mark (the final “s” being omitted), or the SKECH mark, and add various geographic and/or generic terms, such as “au” for Australia, “us” for USA, “off”, “sale”, outlet’, “shops”, along with the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in any way. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead passes off as Complainant and offers unauthorized or counterfeit versions of Complainant’s products on the disputed domain names’ resolving websites. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to pass off as Complainant and offer unauthorized or counterfeit products for sale. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the SKECHERS mark at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the marks SKECHERS and SKECH and uses them to market footwear. The marks were registered in, respectively, 1995 and 2000.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names were registered in 2021 and 2022.
The resolving websites offer for sale unauthorized or counterfeit versions of Complainant’s products; they displays Complainant’s mark and logo.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain names either incorporate Complainant’s SKECHERS mark in its entirety, or a misspelling of the mark (the final “s” being omitted), or Complainant’s SKECH mark, and add various geographic and/or generic terms, such as “au” for Australia, “us” for USA, “off”, “sale”, outlet’, “shops”, along with the “.com” generic top-level domain (“gTLD”). Under Policy ¶ 4(a)(i), adding a geographical term and/or a generic word and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Ticketmaster Corp. v. Kumar, FA 744436 (Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks in any way. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate a Respondent’s identity. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS of record identifies Respondent as “Chenzi, Tinda Candy, Linatoto Totoshop, Tinato Saleonlien, Cocoto Lianda”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
The resolving websites display Complainant’s mark and logo and offer for sale unauthorized or counterfeit versions of Complainant’s products. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to pass off as a complainant and sell unauthorized or counterfeit items is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”); see also Fossil Group, Inc. v. wuwuima wu FA 1544486 (Forum Mar. 21, 2014)(finding the use of the Fossil mark and images of what appear to be genuine Fossil products including watches, wallets and purses established that Respondent had no rights or legitimate interests in the disputed domain name); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s marks. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, the resolving websites offer for sale unauthorized or counterfeit versions of Complainant’s products. Use of a disputed domain name to pass off as a complainant and sell unauthorized or counterfeit versions of a complainant’s goods is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Crocs, Inc. v. jing dian, Case No. FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant’s marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA1407001571172 (Forum Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent’s bad faith was “apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate…”); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and logo, and offer for sale Complainant’s products. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <auskechersale.com>, <skecheroffsale.com>, <skecherstosales.com>, <skecherussale.com>, <skechoutletsusa.com>, and <usaskechersshops.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 6, 2022
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