DECISION

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited

Claim Number: FA2302002032721

PARTIES

Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A Lerner of Kleinberg & Lerner, LLP, United States of America. Respondent is Client Care / Web Commerce Communications Limited (“Respondent”), MY.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <butyskecherspl.com>, <japanskechers.com>, <skechersankara.com>, <skechersbuenosaires.com>, <skechersoutlethrvatska.com>, <skecherspantofi.com>, <skecherssaopaulo.com>, <skechersshoesmalaysia.com>, <skechersshoesspain.com> registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 21, 2023; Forum received payment on February 21, 2023.

On February 22, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <butyskecherspl.com>, <japanskechers.com>, <skechersankara.com>, <skechersbuenosaires.com>, <skechersoutlethrvatska.com>, <skecherspantofi.com>, <skecherssaopaulo.com>, <skechersshoesmalaysia.com>, and <skechersshoesspain.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 February 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2023 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@butyskecherspl.com, postmaster@japanskechers.com, postmaster@skechersankara.com, postmaster@skechersbuenosaires.com, postmaster@skechersoutlethrvatska.com, postmaster@skecherspantofi.com, postmaster@skecherssaopaulo.com, postmaster@skechersshoesmalaysia.com, postmaster@skechersshoesspain.com. Also on February 23, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

On March 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, is in the footwear business.

Complainant asserts rights in the SKECHERS mark based upon registration with the United States Patent and Trademark Office (“USPTO”).

Respondent does not have rights or legitimate interests in the at-issue domain names. Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and is not commonly known by any at-issue domain name. Respondent also does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to offer counterfeit products that compete with Complainant’s business.

Respondent registered and uses the at-issue domain names in bad faith. First, Respondent registered the domain names in order to capitalize on consumer recognition of Complainant’s mark. Respondent had actual or constructive knowledge of Complainant’s rights in the SKECHERS mark.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

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.

DISCUSSION

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”).

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.” 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 they 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 contains Complainant’s trademark and includes generic or descriptive terms. The at-issue domain names are all registered with the same Singapore based domain name registrar. The domain names address several websites that are substantially similar 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.

Identical and/or Confusingly Similar

The at-issue domain names are each 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 Sep. 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 <butyskecherspl.com>, <japanskechers.com>, <skechersankara.com>, <skechersbuenosaires.com>, <skechersoutlethrvatska.com>, <skecherspantofi.com>, <skecherssaopaulo.com>, <skechersshoesmalaysia.com>, and <skechersshoesspain.com> domain names each contain Complainant’s SKECHERS trademark and include a generic term or terms. Each at-issue domain name concludes with the top-level domain name “.com.” 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 <butyskecherspl.com>, <japanskechers.com>, <skechersankara.com>, <skechersbuenosaires.com>, <skechersoutlethrvatska.com>, <skecherspantofi.com>, <skecherssaopaulo.com>, <skechersshoesmalaysia.com>, and <skechersshoesspain.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 / 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).”).

Rights or Legitimate Interests

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 the 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 authorized by or otherwise endorsed by Complainant, when they are not. Notably, such websites display Complainant’s SKECHERS trademark as well as its products. There, Respondent offers to sell unauthorized 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 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); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of each at-issue domain name pursuant to Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

First, by misappropriating Complainant’s trademark to use in its domain names and associated websites Respondent attempts to pass itself off as Complainant and thereby attract consumers so they might purchase unauthorized or 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 Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also, Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 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, 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).

Next, Respondent has a history of domain name abuse having suffered multiple adverse UDRP decision involving a vast number of domain names containing Complainant’s trademark. See e.g., Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited / Melikssa Elma, FA2208002006750 (Forum September 2, 2022); Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited / Veronica Moltas / Johnsson Viljae, FA2205001998511 (Forum July 6,2022); and Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Michelle Junker / Janina Himmel / Sara Scherer / Laura Saenger / Marko Bayer / Martin Aachen / Client Care / Web Commerce Communications Limited / Sabrina Dresdner / Dominik Schweitzer / Tobias Klug / Silke Koenig / Leon Huber / Michelle Neumann, FA2202001983231 (Forum March 23, 2022) Respondent pattern of cybersquatting shows Respondent’s bad faith registration and use of the at-issue domain names pursuant to Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)); see also, United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”).

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 <butyskecherspl.com>, <japanskechers.com>, <skechersankara.com>, <skechersbuenosaires.com>, <skechersoutlethrvatska.com>, <skecherspantofi.com>, <skecherssaopaulo.com>, <skechersshoesmalaysia.com>, and <skechersshoesspain.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").

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <butyskecherspl.com>, <japanskechers.com>, <skechersankara.com>, <skechersbuenosaires.com>, <skechersoutlethrvatska.com>, <skecherspantofi.com>, <skecherssaopaulo.com>, <skechersshoesmalaysia.com>, <skechersshoesspain.com> domain names be TRANSFERRED from Respondent to Complainant.

Paul M. DeCicco, Panelist

Dated: March 17, 2023