Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Rong He / Yong Jian Zhao / Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si / Yan Hu
Claim Number: FA2306002048264
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. Respondents are Rong He / Yong Jian Zhao / Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si / Yan Hu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <clskechers.shop>, <clskechersoutlet.shop>, <esskechersales.shop>, <it-skechersonline.shop>, <itskechersonline.shop>, <skechersales.shop>, <skechersau-online.shop>, <skechersonline-au.shop>, <skechers-outlet.shop>, <skechersuk.shop> and <skechersusoutlet.shop> (the Domain Names”), registered with Chengdu West Dimension Digital Technology Co., Ltd.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 8, 2023. Forum received payment on June 8, 2023.
On June 9, 2023, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the Domain Names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 15, 2023, Forum served the Complaint and all Annexes, including an English and Chinese Written Notice of the Complaint, setting a deadline of July 5, 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@clskechers.shop, postmaster@clskechersoutlet.shop, postmaster@esskechersales.shop, postmaster@it-skechersonline.shop, postmaster@itskechersonline.shop, postmaster@skechersales.shop, postmaster@skechersau-online.shop, postmaster@skechersonline-au.shop, postmaster@skechers-outlet.shop, postmaster@skechersuk.shop, postmaster@skechersusoutlet.shop. Also on June 15, 2023, the English and Chinese 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 July 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
Complainant requests that the Domain Names be transferred from Respondent to Complainant Skechers U.S.A., Inc.
Preliminary Issue: Multiple Complainants
Complainant Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. Hence, they are in privity with each other. The Panel accepts that the parent/subsidiary relationship between Complainants constitutes a sufficient nexus or link such that each may claim to have rights to the Domain Names listed in the Complaint. Hence this decision refers to Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II as “Complainant”.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of 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”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant has shown that the Domain Names are effectively controlled by the same person or entity, which is operating under several aliases. The Domain Names resolve to substantially identical websites that contain the same layout and design elements, all offering footwear bearing Complainant's SKECHERS trademark. Hence this decision refers to Rong He / Yong Jian Zhao / Wen Zhou Fu Jie Jin Rong Xin Xi Fu Wu You Xian Gong Si / Yan Hu as “Respondent”.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Chengdu West Dimension Digital Technology Co., Ltd. registration agreement is in Chinese. Pursuant to Rule 11(a), the language of the proceeding in relation to the Domain Names shall be Chinese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English. The Panel notes that the websites to which the <skechersauonline.shop>, <skechersonline-au.shop>, <skechersuk.shop> and <skechersusoutlet.shop> domain names resolve are all in English and, as determined above, all the Domain Names are under the control of the same entity. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Chinese language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
PARTIES' CONTENTIONS
A. Complainant
Complainant is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through registrations of the mark including with the United States Patent and Trademark Office (“USPTO”). The Domain Names are virtually identical and confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed to Respondent any rights in the SKECHERS mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names resolve to web pages that display Complainant’s mark and suspected counterfeit SKECHERS-branded products. As a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondents' websites are genuine Skechers products.
Respondent registered the Domain Names in bad faith with actual knowledge of Complainant’s rights in the SKECHERS mark and uses the Domain Names in bad faith in order to disrupt Complainant’s business and divert customers for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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”).
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the SKECHERS mark through registrations of the mark in many countries, including with the USPTO (e.g., Reg. No. 1,851,977 registered on August 30, 1994). The Panel finds each of Respondent’s <clskechers.shop>, <clskechersoutlet.shop>, <esskechersales.shop>, <it-skechersonline.shop>, <itskechersonline.shop>, <skechersales.shop>, <skechersau-online.shop>, <skechersonline-au.shop>, <skechers-outlet.shop>, <skechersuk.shop> and <skechersusoutlet.shop> Domain Names to be confusingly similar to Complainant’s SKECHERS mark because each includes the mark in its entirety. The generic terms “outlet”, “sales” and “online”, and the country codes “cl” for Chile, “es” for Spain’, “it” for Italy, “au” for Australia, “uk” for United Kingdom” and “us” for United States are insufficient to distinguish the Domain Names from the mark. The gTLD “shop” indicates a location where Complainant’s products may be bought.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Names or names corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered between February 9 and May 29, 2023, several within minutes of each other on the same day and long after Complainant’s SKECHERS mark had become very well-known. The Domain Names resolve to virtually identical websites that prominently display Complainant’s mark and photographs of what appear to be discounted SKECHERS-branded products.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s well-known SKECHERS mark when Respondent registered the Domain Names and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <clskechers.shop>, <clskechersoutlet.shop>, <esskechersales.shop>, <it-skechersonline.shop>, <itskechersonline.shop>, <skechersales.shop>, <skechersau-online.shop>, <skechersonline-au.shop>, <skechers-outlet.shop>, <skechersuk.shop> and <skechersusoutlet.shop> Domain Names be TRANSFERRED from Respondent to Complainant Skechers U.S.A., Inc.
Alan L. Limbury, Panelist
Dated: July 23, 2023
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