Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. zheng guan nan / feng ze qu di xing fu shi wang dian
Claim Number: FA2007001904068
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 zheng guan nan / feng ze qu di xing fu shi wang dian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skecherus.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2020; the Forum received payment on July 13, 2020.
On July 15, 2020, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <skecherus.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 July 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2020 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@skecherus.com. Also on July 16, 2020, the 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 August 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel has been informed that the Registration Agreement for the disputed domain name is written in Chinese, thereby making that the language of the proceedings. However, citing Rule 11, Complainant has requested that the Panel exercise its discretion to hold these proceedings in another language, namely English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the case and whether or not selecting a language other than that used in the registration agreement will cause prejudice to either party. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). In support of its request, Complainant points out that Respondent’s website available at the disputed domain name uses English characters and words therein, indicating that Respondent is at least proficient in the English language. Further, the disputed domain name intentionally targets Complainant’s business, which is headquartered in the United States.
Having received no objection from Respondent to rebut Complainant’s request or assertions, pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to indicate that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceedings may be conducted in English without prejudice to either party.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings there are two named Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
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.
See also Montres Breguet SA, Tissot SA, Blancpain SA v. Fancy Bandwith, Fancy Bandwith Inc., D2016-1198 (WIPO Aug. 19, 2016) (acknowledging that “the Swatch Group AG is the parent company of the Complainants Montres Breguet SA, Tissot SA, and Blancpain SA.” * * * “The Panel is of the view that the Complainants have a specific common grievance against the Respondent. In addition the Respondent has engaged in a common action that has affected the Complainants’ individual rights in a similar fashion”).
Here, the Complaint states that “Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc.” In support of this claim, excerpts from the fiscal 2018 10-K report filed by Skechers U.S.A., Inc. is submitted as an Annex to the Complaint and this report lists Skechers U.S.A., Inc. II as a subsidiary entity.
In light of the evidence provided, this Panel holds that the there is a link between the two named Complainants Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II and that they have a specific common grievance against the Respondent who has engaged in a common action that has affected the Complainants’ in a similar fashion. As such, they may both properly participate in this case.
A. Complainant
Complainant has been in the footwear and apparel and related retail service industry since 1993. Complainant has rights in the trademark SKECHERS based upon its use in commerce for over 25 years and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and many other national trademark offices around the world, the oldest of these dating back to 1994. Respondent’s <skecherus.com> domain name, registered on April 10, 2020, is identical or confusingly similar to Complainant’s mark as it includes the SKECHERS mark in its entirety, merely adding the letter “u” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights or legitimate interests in the <skecherus.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent prominently displays the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale.
Respondent registered and uses the <skecherus.com> domain name in bad faith. Respondent’s <skecherus.com> domain name contains an exact reproduction of the well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark. The website that results from this domain name is currently advertising face masks for sale. Additionally, based on the longstanding use of the SKECHERS mark and Respondent’s reproduction of the SKECHERS mark in the gTLD, Respondent must have had actual and constructive knowledge of Complainant’s rights in the mark at the time of registration of the disputed domain name. Because the SKECHERS mark is distinctive and unique, it is unlikely that Respondent devised the term on its own.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) The domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) The disputed domain name was registered and is being used by Respondent in bad faith.
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”).
Complainant asserts rights in the SKECHERS mark based on registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of one of its USPTO registration for the SKECHERS mark. Therefore, the Panel finds that Complainant has rights in the SKECHERS mark per Policy ¶ 4(a)(i). Complainant also provides a textual list of its claimed trademark registrations in other countries but this will not be considered in the present case.[i]
Next, Complainant argues that Respondent’s <skecherus.com> domain name is identical or confusingly similar to Complainant’s mark as it includes the SKECHERS mark in its entirety followed by the letter “u” and the “.com” gTLD. The addition of a single letter and a gTLD typically fails to sufficiently distinguish a domain name from an asserted trademark for the purposes of Policy ¶ 4(a)(i). See Klein Tools, Inc. v chenxinqi, FA 1617328 (Forum July 6, 2018) (finding that the <klentools.com> domain name is confusingly similar to the KLEIN TOOLS mark as it contains the entire KLEIN TOOLS mark and merely omits the letter “l” and adds the “.com” generic top-level domain (“gTLD”)). The Panel therefore finds that the disputed domain name is confusingly similar to the SKECHERS mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <skecherus.com> domain name. It asserts that Respondent is not commonly known by the disputed domain name and adds that Respondent is not a licensee or authorized to use Complainant’s mark. When considering this issue posed by Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is or is not commonly known by a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted that it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “zheng guan nan / feng ze qu di xing fu shi wang dian” and there is no evidence to suggest that Respondent is known otherwise or that it is authorized to use the SKECHERS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <skecherus.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use as Respondent prominently displays the SKECHERS mark along with face masks that do not originate with Complainant. Passing oneself off as a complainant by displaying a complainant’s mark and offering for sale goods that do not originate from, or are licensed by the complainant’s business may not be a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Haru Holding Corporation v. AI Matusita, FA 1679867 (Forum Aug. 11, 2016) (holding that “unrelated use [of a disputed domain name] by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use”). Here, Complainant provides screenshots of the resolving webpage of the disputed domain name which purportedly displays the SKECHERS mark and offers for sale face masks. Complainant asserts that “[u]nsuspecting consumers may be duped into believing that the products displayed on the Respondent's website are Skechers products.” The Panel finds this to be a credible claim that makes out a prima facie case by Complainant. As Respondent has filed no reply or made any other submission in this case, the Panel finds, by a preponderance of the evidence before it, that Respondent fails to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or legitimate noncommercial or fair use of the disputed domain name per Policy ¶ 4(c)(iii).
Complainant contends that, in light of the fame and notoriety of Complainant's SKECHERS mark, it is inconceivable that Respondent could have registered the <skecherus.com> domain name without actual or at least constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent most often declines to find bad faith as a result of constructive knowledge – especially where, as here, there is no evidence that the Respondent is subject to the laws of a jurisdiction that adopts such principle. See UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") However, actual knowledge of a complainant’s mark has been found to support a claim of bad faith. See 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.”) Complainant claims that “the SKECHERS trademark has become well recognized by consumers” because “Complainant has prominently and extensively used, promoted, and advertised the SKECHERS trademark for over 25 years.” It also states that “Complainant's footwear products are sold in more than 170 countries and territories around the world in over 3,550 Skechers retail stores….” However, the only evidence of Complainant’s actual use of its mark is the screenshots of one of its web pages at its www.skechers.com site. No other evidence of complainant’s actual use or its reputation with consumers has been provided to support the claimed notoriety of the SKECHERS mark – particularly in relation to China where Respondent appears to reside[ii]. Nevertheless, based upon the prominent appearance of Complainant’s mark on Respondent’s website, the listing prices in US Dollars on Respondent’s website, and Respondent’s failure to refute Complainant’s claims, the Panel accepts the assertion that Respondent must have had actual knowledge of Complainant's rights in the SKECHERS mark prior to registering the disputed domain name. Such actual knowledge is an adequate foundation upon which to build a case of bad faith under Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and uses the <skecherus.com> domain name in bad faith as it contains an exact reproduction of Complainant’s SKECHERS mark to capitalize on the consumer recognition of the mark. A domain name that copies a complainant’s mark, thus creating a likelihood of confusion for commercial gain, can evince bad faith registration and use under Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that Respondent attempts to capitalize on consumer confusion by incorporating the exact SKECHERS mark into the disputed domain name. Upon the evidence and arguments before it, the Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skecherus.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 11, 2020
[i] The Panel notes that such a textual list, generated by the Complainant and unsupported by copies of registration certificates, screenshots from the various trademark offices mentioned in its list, or by a declaration or affidavit, does not itself constitute evidence of trademark registrations or rights. As such, this list of claimed registrations will not be considered as proof of trademark rights in this case.
[ii] The Complainant acknowledges the importance to this case of its trademark rights in China as it states that “The SKECHERS trademark has been deemed a ‘well-known’ trademark by the China National Intellectual Property Administration”. However, no document or other evidence is submitted to support this assertion.
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