Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited
Claim Number: FA2206002001033
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 Client Care / Web Commerce Communications Limited (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue is <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2022; the Forum received payment on June 20, 2022.
On June 21, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to the Forum that the <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. 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 June 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 12, 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@skechersbotyprodejny.com, postmaster@skecherschile.com, postmaster@skechersespanatiendas.com, postmaster@skechersitalia.com, postmaster@skechersjapan.com, postmaster@skechersmagazalari.com, postmaster@skechersmalaysiaonline.com, postmaster@skechers-mexico.com, postmaster@skechersnederlandwinkel.com, postmaster@skechersphilippinessale.com, postmaster@skecherspolskasklepy.com, postmaster@skechersskorbutik.com, postmaster@skecherssouthafricastores.com, postmaster@skecherssuomiale.com, postmaster@skechersusaoutlet.com, postmaster@skechers-webshop.com, postmaster@tiendaskecherscolombia.com. Also on June 22, 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 July 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.”
The two named Complainants in this matter are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. and both are in privity with one another. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of herein such that they may be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that notwithstanding differences in the domain registration records for the at-issue domain names are nevertheless effectively controlled by the same person and/or entity. 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 domain names in the present dispute are similarly constructed as each domain name starts with Complainant’s trademark and include generic terms. Most added terms are geographic identifiers. Each domain name addresses websites that are substantially identical to each other and offer Complainant’s products in a similar manner. While it is possible that the domain names’ underlying registrants may or may not differ in the relevant WHOIS data, the at-issue domain names clearly appear to be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s contention that the domain names’ registrants be treated as a single entity is unopposed. Therefore, the Panel will treat the domain names’ registrants as a single entity for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant provides a variety of lifestyle and performance footwear products.
Complainant asserts rights in the SKECHERS mark through its registration of the mark with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO).
Respondent’s at-issue domain names are identical or confusingly similar to Complainant’s SKECHERS mark as they incorporate the mark in its entirety, only adding generic or geographic terms throughout, as well as the “.com” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the at-issue domain names. Complainant has not authorized or licensed Respondent to use the SKECHERS mark, nor is Respondent commonly known by the at-issue domain names. Further, Respondent is not using the domain names in connection with bona fide offering of goods and services or legitimate noncommercial or fair uses as the resolving websites offer Complainant’s counterfeit goods.
Respondent registered and uses the at-issue domain names in bad faith. Respondent registered multiple domain names, all incorporating Complainant’s famous mark, evidencing Respondent had actual notice of Complainant’s rights in the SKECHERS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the SKECHERS trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the SKECHERS trademark.
Respondent uses the at-issue domain names to pass itself off as Complainant and to address websites that offer SKECHERS branded products for sale.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration along with multiple other national trademark registrations for its SKECHERS trademark. Any of such registrations is sufficient to demonstrate Complainant’s rights in the SKECHERS mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”).
Respondent’s <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.com> domain names each contain Complainant’s SKECHERS trademark followed by one or more generic terms, with all followed by the top-level domain name “.com.” Two of the domain names contain an insignificant hyphen. The differences between each at-issue domain names and Complainant’s SKECHERS trademark are insufficient to distinguish any of the at-issue domain names from SKECHERS for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.com> domain names are each confusingly similar to Complainant’s SKECHERS trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable 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 Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any at‑issue domain name.
The WHOIS information for the at-issue domain names identifies their individual registrants as “Client Care / Web Commerce Communications Limited,” and record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain names address websites designed to appear as if they are authorized by or otherwise endorsed by Complainant, when they are not. There, Respondent purports to sell Complainant’s footwear or counterfeits thereof. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name); see also, 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.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.com> domain name were each registered and used in bad faith. As discussed below without limitation, circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name, pursuant to paragraph 4(a)(iii) of the Policy.
By misappropriating Complainant’s trademark and other intellectual property to use in its domain names and associated websites Respondent attempts to pass itself off as Complainant and thereby trick unwittingly consumers into purchasing likely counterfeit SKECHERS footwear. Respondent’s use of the at-issue domain names to deceive internet users in this manner disrupts Complainant’s business and shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶¶ 4(b)(iii) and/or (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 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 additionally 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).
Moreover, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in the SKECHERS trademark. Respondent’s prior knowledge is evident given SKECHERS’ notoriety and its arbitrary nature, and given the fact that Respondent registered multiple domain names containing Complainant’s SKECHERS mark. Further, Respondent’s use of the domain names to address websites which displays Complainant’s trademark and images of Complainant’s merchandise in support of Respondent’s sale of what appears to be counterfeit merchandise makes it inconceivable that Respondent was unaware of Complainant’s SKECHERS trademark when it registered the at-issue domain names. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersbotyprodejny.com>, <skecherschile.com>, <skechersespanatiendas.com>, <skechersitalia.com>, <skechersjapan.com>, <skechersmagazalari.com>, <skechersmalaysiaonline.com>, <skechers-mexico.com>, <skechersnederlandwinkel.com>, <skechersphilippinessale.com>, <skecherspolskasklepy.com>, <skechersskorbutik.com>, <skecherssouthafricastores.com>, <skecherssuomiale.com>, <skechersusaoutlet.com>, <skechers-webshop.com> and <tiendaskecherscolombia.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 15, 2022
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