Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. hx sales
Claim Number: FA2007001904400
Complainants are 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 hx sales (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zapatillashyper.com>, registered with Web Commerce Communications Limited dba WebNic.cc.
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.
Alan L. Limbury, as Panelist.
Complainants submitted a Complaint to the Forum electronically on July 15, 2020. The Forum received payment on July 15, 2020.
On July 21, 2020, Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to the Forum that the <zapatillashyper.com> domain name is registered with Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the name. Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the Web Commerce Communications Limited dba WebNic.cc 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@zapatillashyper.com. Also on July 22, 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 13, 2020, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
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, which is a wholly owned subsidiary of Skechers U.S.A., Inc. See Compl. Annex 2. Accordingly, both are in privity with each other and the Panel accepts that both can claim rights in the <zapatillashyper.com> domain name. The Panel will henceforth refer to them collectively as Complainant.
Complainant requests that the domain name be transferred from Respondent to Skechers U.S.A., Inc. II.
A. Complainant
Complainant has been in the footwear and apparel and related retail service industry since 1993. The trademark SKECHERS is the house mark of the company that appears on Complainant's products and marketing and promotional materials. Complainant has rights in the HYPER GO and HYPER BURST marks through their registration with the European Union Intellectual Property Office (“EUIPO”). Respondent’s <zapatillashyper.com> domain name is confusingly similar to those marks.
Respondent lacks rights or legitimate interests in the <zapatillashyper.com> domain name. Respondent is not commonly known by the domain name and is not a licensee or authorized to use Complainant’s mark. Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s website prominently displays the domain name and the SKECHERS mark along with suspected counterfeit versions of Complainant’s products offered for sale.
Respondent registered and uses the <zapatillashyper.com> domain name in bad faith. Respondent's website prominently displays the well-known SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products to capitalize on consumer recognition of the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Skechers U.S.A., Inc., through its subsidiary Skechers U.S.A., Inc. II, has rights in the HYPER GO and HYPER BURST marks through the registration by Skechers U.S.A., Inc. II with the EUIPO of the mark HYPER GO - Reg. No. 017894197, registered on August 30, 2018 and the mark HYPER BURST – Reg. No. 017928173, registered on November 8, 2018.
The Panel finds Respondent’s <zapatillashyper.com> domain name to be confusingly similar to each of those marks because it includes the dominant portion of each mark, together with the Spanish generic term “zapatillas” (which translates to shoes) and the inconsequential generic top-level domain (“gTLD”) “.com”, which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent registered the <zapatillashyper.com> domain name on December 4, 2018. It resolves to a website displaying the well-known SKECHERS mark and promoting shoes for sale suspected by Complainant to be counterfeit versions of Complainant’s products.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
The use of the domain name to resolve to a website displaying the well-known SKECHERS mark, promoting for sale shoes suspected by Complainant to be counterfeit versions of Complainant’s products, satisfies the Panel, in the absence of any Response, that Respondent was aware of Complainant and its rights in the HYPER GO and HYPER BURST marks when registering the domain name and has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of products on its website.
Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zapatillashyper.com> domain name be TRANSFERRED from Respondent to Skechers U.S.A., Inc. II.
Alan L. Limbury, Panelist
Dated: August 17, 2020
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