Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Domain Admin / Whoisprotection.cc
Claim Number: FA2109001963719
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 Domain Admin / Whoisprotection.cc (“Respondent”), Maylasia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maxcushioningshoes.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 14, 2021; the Forum received payment on September 14, 2021.
On September 15, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <maxcushioningshoes.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 September 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2021 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@maxcushioningshoes.com. Also on September 21, 2021, 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 October 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
A. Complainant
Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, operate an athletic footwear manufacturing company. Complainant has rights in the MAX CUSHIONING mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 6,353,616, registered May 18, 2021). Respondent’s <maxcushioningshoes.com> domain name is identical or confusingly similar to Complainant’s MAX CUSHIONING mark, only differing by the addition of the generic or descriptive term “shoes” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <maxcushioningshoes.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the MAX CUSHIONING mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent attempts to sell counterfeit versions of Complainant’s products.
Respondent registered and uses the <maxcushioningshoes.com> domain name in bad faith. Respondent uses the disputed domain name to display counterfeit versions of Complainant’s products, disrupting Complainant’s business and likely leading to commercial gain for Respondent. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, operate an athletic footwear manufacturing company. Complainant has rights in the MAX CUSHIONING mark through its registration with the USPTO (e.g., Reg. 6,353,616, filed September 10, 2020; registered May 18, 2021). Respondent’s <maxcushioningshoes.com> domain name is confusingly similar to Complainant’s MAX CUSHIONING mark.
Registered the <maxcushioningshoes.com> domain name on April 13, 2021.
Respondent lacks rights and legitimate interests in the <maxcushioningshoes.com> domain name. Respondent attempts to sell counterfeit versions of Complainant’s products.
Respondent registered and uses the <maxcushioningshoes.com> domain name 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 has rights in the mark under Policy ¶ 4(a)(i) through its registration with the USPTO. Registration of a mark with a nation’s trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”).
Complainant has provided evidence of rights in the MAX CUSHIONING mark through registration with the USPTO. Although Complainant's USPTO registration for the MAX CUSHIONING mark was issued a month after Respondent's registration of the disputed domain name, Complainant's rights in the mark date back to September 10, 2020, when the trademark application was initially filed. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal rights is . . . the filing date of its issued registration.”). Therefore, Complainant has established prima facie evidence of rights in its mark. The burden then shifts onto Respondent to refute this presumption. In light of Respondent’s failure to set forth evidence suggesting otherwise, the Panel finds that Complainant has established rights in the MAX CUSHIONING mark pursuant to Policy 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.").
Respondent’s <maxcushioningshoes.com> domain name is confusingly similar to Complainant’s MAX CUSHIONING mark, only differing by the addition of the generic or descriptive term “shoes” and the “.com” gTLD.
Respondent lacks rights and legitimate interests in the <maxcushioningshoes.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MAX CUSHIONING mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS information of record identifies “Domain Admin / Whoisprotection.cc” as the registrant of the disputed domain name. Moreover, nothing in the record rebuts Complainant’s contention that it never authorized Respondent’s use of the MAX CUSHIONING mark. As such, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent fails to use the <maxcushioningshoes.com> domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use, but rather to display counterfeit versions of Complainant’s SKECHERS-branded products. Such use of an infringing domain name does not qualify as either a bona fide offer of goods or services or as a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See 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).
Respondent registered and uses the <maxcushioningshoes.com> domain name in bad faith because it uses the disputed domain name to display counterfeit versions of Complainant’s products, demonstrating bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 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 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).
Additionally, Respondent registered the <maxcushioningshoes.com> domain name with actual knowledge of Complainant’s rights in the MAX CUSHION mark, thereby registering and using the domain name in bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maxcushioningshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 29, 2021
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