Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited
Claim Number: FA2303002034073
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 <canadaskechersonline.com>, <irelandskechers.com>, <nzskechers.com>, <parisskechers.com>, <scarpeskechersitalia.com>, <skechersshoposterreich.com>, <skechers-be.com>, <skechersonlinenederland.com>, <skechersgoedkoopste.com>, <skechersonlineau.com>, <skechersonlineindia.com>, <skechersukshoes.com> and <skecherszurich.com>, all 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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on March 1, 2023; Forum received payment on March 1, 2023.
On March 3, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that all of the domain names <canadaskechersonline.com>, <scarpeskechersitalia.com>, <irelandskechers.com>, <nzskechers.com>, <parisskechers.com>, <skechers-be.com>, <skechersukshoes.com>, <skecherszurich.com>, <skechersgoedkoopste.com>, <skechersonlinenederland.com>, <skechersonlineau.com>, <skechersshoposterreich.com> and <skechersonlineindia.com> 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 March 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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 the attention of the following: postmaster@canadaskechersonline.com, postmaster@irelandskechers.com, postmaster@nzskechers.com, postmaster@skechersonlinenederland.com, postmaster@parisskechers.com, postmaster@scarpeskechersitalia.com, postmaster@skechers-be.com, postmaster@skechersgoedkoopste.com, postmaster@skechersonlineau.com, postmaster@skechersonlineindia.com, postmaster@skecherszurich.com, postmaster@skechersukshoes.com and postmaster@skechersshoposterreich.com. Also on March 6, 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 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
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.” Forum 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 Complaint before us identifies two Complainants, Skechers U.S.A., Inc. II and Skechers U.S.A., Inc. It also recites that the two are affiliated companies in that Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc. In the absence of any objection from Respondent, such an affiliation between the two enterprises is a sufficient justification for granting Complainant’s request that they be permitted to proceed together to prosecute their Complaint. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel there finding that:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
See also Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum December 28, 2003), in which a panel treated two complainants as a single entity where both held rights in trademarks contained within disputed domain names. Further see Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum February 6, 2004), a panel there finding a sufficient link between multiple complainants where there was a license between them regarding use of a mark at issue in the proceeding.
Accordingly, throughout this proceeding, the two identified complaining companies will be referred to collectively as a single Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
(1) all of the domain names identified with Respondent contain the same layout and design elements;
(2) all of them purport to market footwear bearing Complainant’s SKECHERS mark;
(3) all of them are registered with the same registrar, Alibaba.com Singapore E-Commerce Private Limited; and
(4) all of them were registered in the period between August 16 and November 7, 2022.
Because Respondent does not refute any of these assertions, the Panel determines that Complainant’s request must be granted. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):
The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, [and] have been used in the same way, …. These elements are sufficient to find that the domain names were registered by the same domain name holder.
Accordingly, this Decision will treat the collective of identified domain name names as being under the control of a single Respondent.
A. Complainant
Commencing in 1993, Complainant has become a leading international marketer of shoes, apparel, and accessories.
Complainant holds a registration for the SKECHERS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,851,977, registered August 30, 1994, and renewed most recently as of February 14, 2014.
Complainant does business online at <www.skechers.com>.
Respondent registered the domain names <canadaskechersonline.com>, <irelandskechers.com>, <nzskechers.com>, <parisskechers.com>, <scarpeskechersitalia.com>, <skechersonlinenederland.com>, <skechersgoedkoopste.com>, <skechersshoposterreich.com>, <skechersukshoes.com>, <skecherszurich.com>, <skechers-be.com>,
<skechersonlineau.com> and <skechersonlineindia.com> separately on various dates in the period from August 16 through November 7, 2023.
All of the domain names are confusingly similar to Complainant’s SKECHERS trademark.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use the SKECHERS trademark for any purpose.
Respondent does not use the any of the domain names for either a bona fide offering of goods or services or in connection with any legitimate non-commercial or fair use.
Instead, Respondent resolves the domain names to web pages displaying Complainant’s logo in order to sell counterfeit versions of SKECHERS-branded products in competition with the business of Complainant.
Respondent has neither rights to nor legitimate interests in any of the domain names.
Respondent registered the domain names while knowing of Complainant and its rights in the SKECHERS mark.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the any of the domain names; and
(3) All of the domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
By virtue of its registration of the SKECHERS trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy¶4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Malaysia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy¶4(a)(i), we conclude from a review of the record that all thirteen of Respondent’s domain names:
<canadaskechersonline.com>, <skechersonlinenederland.com>, <irelandskechers.com>, <nzskechers.com>, <parisskechers.com>, <scarpeskechersitalia.com>, <skechersshoposterreich.com>, <skechersonlineindia.com>, <skechersgoedkoopste.com>, <skechers-be.com>, <skechersonlineau.com>, <skechersukshoes.com> and <skecherszurich.com>, are confusingly similar to Complainant’s SKECHERS mark. Each of them incorporates the mark in its entirety, with only the addition of the generic Top Level Domain (“gTLD”) “.com” and one or more generic terms, some of which (“online,” “scarpe” [Italian for “shoes”], “shop,” “shoes,” and “goedkoopste,” [Norwegian for “cheapest”]) underscore both the commercial character of Respondent’s intentions in creating the domain names and its deliberate targeting of Complainant’s value-priced footwear business conducted via the Internet. The other generic terms built into the domain names are geographic references (“canada,” “nederland,” “ireland,” “nz” [the country code for New Zealand], “au” [the country code for Australia], “paris,” “italia,” “osterreich,” [German for “Austria”], “india,” “be” [the country code for Belgium], “uk” [the country code for the United Kingdom] and “zurich”), which both singly and together underscore Respondent’s understanding of, and intent to exploit, the global nature of Complainant’s business. On the latter point, see, for example, Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum April 11, 2018) (finding the <franklincoveykorea.com> domain name confusingly similar to the FRANKLIN COVEY mark, because:
[t]he addition of a geographic term … [to the mark of another in creating a domain name ] … do[es] not negate confusing similarity between a domain name and a mark per Policy¶4(a)(i).
With regard to Respondent’s incorporation, in several of the domain names, of terms readily associated with Complainant’s business, see, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant the generic term “finance,” which described that complainant’s financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy¶4(a)(i)). See also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018):
[D]ifferences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark …, do not distinguish the domain name[s] from the mark incorporated therein per Policy¶4(a)(i).
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy¶4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the thirteen contested domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the any of the challenged domain names, and that Complainant has not licensed or otherwise authorized Respondent to use the SKECHERS trademark for any purpose. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Client Care / Web Commerce Communications Limited,” which does not resemble any of them. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent resolves all of the disputed domain names to web pages displaying Complainant’s logo in order to sell what are apparently counterfeit versions of SKECHERS-branded products in competition with the business of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum August 11, 2017):
Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s … brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant…. … [T]he Panel finds that Respondent has no rights [to] or legitimate interests in the disputed domain name.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the thirteen challenged domain names, as detailed in the Complaint, is an attempt by Respondent to profit from the confusion caused among Internet users as to the possibility of Complainant’s association with the domain names. Under Policy¶4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain names. See, for example, Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum February 16, 2007):
The Panel finds such use to constitute bad faith registration and use pursuant to Policy¶4(b)(iv), because Respondent is taking advantage of the confusing similarity between … [its] … domain name and Complainant’s … mark in order to profit from the goodwill associated with the mark.
It is obvious from the evidence that Respondent knew of Complainant and its rights in the SKECHERS trademark when it registered each of the domain names. This plainly demonstrates that Respondent registered them in bad faith. See, for example, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when registering a disputed domain name).
The Panel thus finds that Complainant has amply met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all of the domain names <skechers-be.com>, <skecherszurich.com> <skechersonlineindia.com>, <nzskechers.com>, <skechersshoposterreich.com>, <skechersonlinenederland.com>, <parisskechers.com>, <irelandskechers.com> <skechersonlineau.com>, <canadaskechersonline.com>, <skechersgoedkoopste.com>, <skechersukshoes.com>, and <scarpeskechersitalia.com>, be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 5, 2023
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