Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited
Claim Number: FA2203001990043
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 Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersbrasilia.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.
James Bridgeman SC as Panelist.
Complainants submitted a Complaint to the Forum electronically on March 28, 2022; the Forum received payment on March 28, 2022.
On March 30, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <skechersbrasilia.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 April 1, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@skechersbrasilia.com. Also on April 1, 2022, 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 April 26, 2022, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.
Complainants request that the disputed domain name be transferred to the first named Complainant, Skechers U.S.A., Inc.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two 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.”
The second named Complainant, Skechers U.S.A., Inc. II is a wholly owned subsidiary of the first named Complainant Skechers U.S.A., Inc. and this Panel finds that as both in privity with each other, there is a sufficient nexus that they can each claim to have rights in the disputed domain name.
A. Complainant
Complainants claims rights in the SKECHERS mark established by the first named Complainant’s ownership of the portfolio of trademark registrations described below and the extensive use of the mark by Complainants in their global business manufacturing and marketing lifestyle and performance footwear. Industry.
Complainants submit that their footwear products are sold in more than 170 countries and territories around the world through over 3,550 SKECHERS branded retail store, other retail outlets and online through its website <www.skechers.com>.
Complainants allege that the disputed domain name <skechersbrasilia.com> is confusingly similar to Complainant’s SKECHERS mark because the domain includes the SKECHERS mark in its entirety, adding the city name “Brasilia”, and the generic top-level domain (gTLD) ".com."
It is argued that the addition of generic and / or geographic terms to Complainant's SKECHERS mark does not remove the disputed domain from the realm of confusingly similarity. Citing, Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2014) ("…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.").
Complainants further allege that Respondent has no rights or legitimate interests in respect of the domain name <skechersbrasilia.com>, arguing that the SKECHERS mark is an arbitrary term which has no meaning outside its use as a means to identify Complainants as a source of Complainants’ products. Yet Respondent somehow managed to register the disputed domain name containing Complainants' mark in its entirety on November 08, 2021, long after Complainants began using the SKECHERS mark.
Complainants contend that upon information and belief, Respondent is not a licensee, authorized retailer, or distributor of Complainants' products nor is Respondent otherwise authorized to use the name or the SKECHERS trademark for any purpose.
Furthermore it is submitted that upon information and belief, Respondent is not commonly known by the disputed domain name. The registrant's WHOIS information has been redacted and there is no other evidence in the record to suggest that the Respondent was commonly known by the disputed domain name. Citing Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a/ Electromatic Equip't" as the registrant and no other evidence in the record suggests that Respondent was commonly known by the domain names in dispute).
Referring to a screen capture of the website to which the disputed domain name resolves, Complainants contend that Respondent’s website prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products that compete directly with Complainants' business. As a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent’s website are Complainants’ genuine products.
Complainants add that in short, there is no legitimate basis for Respondent’s registration and / or use of the disputed domain name, which is confusingly similar to Complainants' SKECHERS mark.
Complainants next allege that the disputed domain name was registered and is being used in bad faith, arguing that the very nature of Respondent’s registration of the disputed domain name is evidence of bad faith and adding that upon information and belief, Respondent knowingly registered the disputed domain name containing an exact reproduction of the well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark.
Complainants assert that they are engaged in the business of designing, developing, and marketing footwear and apparel products. The fact that Respondent chose to register an exact reproduction of Complainants' SKECHERS mark in the gTLD <.com> and is using the website to which the disputed domain name resolves, to sell SKECHERS branded shoes indicates that Respondent had knowledge of Complainants and Complainants' business.
Complainants add that the SKECHERS trademark was registered in 1994, well before Respondent’s registration of the disputed domain name in 2021 and so Respondent had at least constructive knowledge of Complainants' rights in its mark at the time the disputed domain name was registered.
Complainants further contends that moreover, the designation SKECHERS is unique and arbitrary such that it is unlikely that Respondent devised the term on its own, and submits that this factor alone weighs in favor of finding bad faith against the Respondent. Citing, Neuberger Berman Inc. v. Alfred Jacobsen WIPO Case D2000-0323 (weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith).
In conclusion Complainants submit that the allegations of bad faith set out above, combined with Respondent’s lack of interest or rights in the disputed domain name, should lead the Panel to the inevitable conclusion that there is no plausible circumstance under which Respondent could legitimately register or use the disputed domain name, and therefore, the disputed domain name was registered and is being used by Respondent in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The first named Complainant is the parent corporation of the second named Complainant and they design and produce footwear and apparel and provide related retail services using the SKECHERS mark for which the first named Complainant owns a large portfolio of registrations in jurisdictions across the world including United States registered trademark SKECHERS, registration number 1851977 registered on August 30, 1994 for goods in international class 25.
Complainants have an established presence and reputation on the Internet and maintain a website at <www.skechers.com>.
The disputed domain name was registered on November 8, 2021 and resolves to a website which purports to offer Complainants’ products at 23% discount, the content of which is in Portuguese and English languages.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to the request by the Forum for verification of the details of the registration of the disputed domain name in the course of this proceeding.
Respondent’s name did not appear on the published WHOIS and the Registrar verified that Respondent is the registrant of the disputed domain name.
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”).
Complainants have provided convincing evidence of their rights in the SKECHERS mark, established by the first named Complainant’s ownership of the portfolio of trademark registrations described above and extensive use of the mark in their footwear and apparel businesses.
The disputed domain name <skechersbrasilia.com> consists of Complainants’ mark in its entirety, in combination with geographical place name “Brasilia” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainants’ SKECHERS mark is the dominant and only distinctive element in the disputed domain name. The geographic term “brazilia” does not prevent a finding of confusing similarity between the disputed domain name and Complainants’ mark.
Neither does the generic Top Level Domain (“gTLD”) extension <.com> add any distinguishing character as it would on the balance of probabilities be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the SKECHERS mark in which Complainants have rights and Complainants have therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainants have made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· the SKECHERS mark is an arbitrary term which has no meaning outside its use as a means to identify Complainants as a source of Complainants' products, yet Respondent somehow managed to register the disputed domain name containing Complainants' mark in its entirety on November 08, 2021, long after Complainants began using the SKECHERS mark;
· upon information and belief, Respondent is not a licensee, authorized retailer, or distributor of Complainants' products;
· upon information and belief, Respondent is not otherwise authorized to use the name or the SKECHERS trademark for any purpose;
· upon information and belief, Respondent is not commonly known by the disputed domain name; the registrant's WHOIS information has been redacted and there is no other evidence in the record to suggest that the Respondent was commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a/ Electromatic Equip't" as the registrant and no other evidence in the record suggests that Respondent was commonly known by the domain names in dispute).
· the screen capture of the website to which the disputed domain name resolves, which has been exhibited in an annex to the Complaint, illustrates that Respondent’s website prominently displays the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products;
· Respondent is using the SKECHERS trademark on its website to sell suspected counterfeit SKECHERS-branded products that compete directly with Complainant's business and as a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondent’s website are Complainant’s genuine products;
· there is no legitimate basis for Respondent’s registration and / or use of the disputed domain name, which is confusingly similar to Complainants' SKECHERS mark.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainants have therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainants’ rights in the SKECHERS mark is evidenced by the first named Complainant’s ownership of the United States of America registered trademark SKECHERS, registration number 1851977 registered on August 30, 1994, long predate the registration of the disputed domain name on November 8, 2021 and extensive use of the mark in their global businesses.
The evidence is that SKECHERS is a coined, arbitrary word and it is improbable that the registrant would have been unaware of its use by Complainant’s footwear business which is internationally established and in circumstances where Complainant has an Internet presence when the confusingly similar domain name was chosen and registered.
Because Complainant’s SKECHERS mark is the initial, dominant and only distinctive element in the disputed domain name, this Panel finds that on the balance of probabilities that registrant of the disputed domain name was not only aware of Complainants when the disputed domain name was chosen and registered, but in fact chose and registered the disputed domain name with Complainants’ mark in mind in order to take predatory advantage of Complainants’ reputation and goodwill in the SKECHERS mark.
The evidence proves on the balance of probabilities that Respondent is causing or permitting the disputed domain name to be used as the address of a website which purports to offer Complainants’ goods at highly discounted prices.
The core issue here is whether by using the disputed domain name to attract Internet traffic is bad faith use. If the products on sale were counterfeit that would be determinative of the issue, but in the Complaint, Complainants only infer rather than even allege that Respondent is selling counterfeit goods and have only provided circumstantial evidence to support their inference.
If it intends to rely on that argument that products are counterfeit, a well-resourced corporation such as Complainant could perhaps have provided more evidence to support its inference.
Addressing this issue the WIPO Overview states:
“2.13.2 Panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. Evidence that the goods are offered disproportionately below market value, that the goods are only sold under license or through a prescription (especially with pharmaceutical products), that the images of the goods prima facie suggest (e.g., where the relevant logo is distorted) that they are not genuine, that the respondent has misappropriated copyrighted images from the complainant’s website, that the goods are extremely rare, that the goods have prompted consumer complaints, or that a respondent has improperly masked its identity to avoid being contactable, have each been found relevant in this regard.”
In this proceeding, the evidence shows that Respondent is purporting to offer Complainants’ goods disproportionately below market value which suggests that if indeed there is any real offering of goods, they are counterfeit.
There is no mention of Respondent’s identity or contact details on the website, nor is there any statement or disclaimer, clarifying that the website has no association with Complainants. Additionally, Respondent has endeavored to conceal its identity on the published WhoIs.
Furthermore Respondent has not denied Complainant’s allegation that goods on offer are counterfeit or made any response to this Complaint.
Given the factors and circumstances described above, this Panel accepts that on the balance of probabilities, Respondent is not offering Complainants’ genuine products for sale at this large discount.
Additionally, this Panel finds that on the balance of probabilities that, Respondent is using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
As this Panel has found that the disputed domain name was registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <skechersbrasilia.com> domain name be TRANSFERRED from Respondent to the first named Complainant, Skechers U.S.A., Inc.
James Bridgeman SC
Panelist
Dated: April 28, 2022
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