Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Client Care / Web Commerce Communications Limited / Klaus Wirtz
Claim Number: FA2306002049045
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 / Klaus Wirtz (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechers-fr.com>, <skechershungary.net>, <skechers-lojas.com>, <skechersschuhe.com>, and <skechersskonorge.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and Gransy, s.r.o.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 14, 2023; Forum received payment on June 14, 2023.
On June 15, 2023; Jun 20, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and Gransy, s.r.o. confirmed by e-mail to Forum that the <skechers-fr.com>, <skechershungary.net>, <skechers-lojas.com>, <skechersschuhe.com>, <skechersskonorge.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and Gransy, s.r.o. and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and Gransy, s.r.o. has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and Gransy, s.r.o. 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 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@skechers-fr.com, postmaster@skechershungary.net, postmaster@skechers-lojas.com, postmaster@skechersschuhe.com, postmaster@skechersskonorge.com. Also on June 21, 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 July 17, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceeding, there are two Complainants and the question therefore arises whether in those circumstances there is standing to initiate and determine the Complaint. 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.”
Previous panels have interpreted Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. The matter may therefore go forward and be determined on that basis. In doing so, references to Complainant in this decision should be taken to mean both of the named Complainants.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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.”
In support of that submission, Complainant contends that each resolving webpage has a similar look and feel, with nearly identical formatting and content. The resolving websites also list the same products.
Having regard to that evidence, the Panel finds find the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore go forward on that basis. In doing so, references to Respondent in this decision should be taken to mean all of the named Respondents.
A. Complainant
Complainant made the following contentions.
Complainant is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant asserts rights in the SKECHERS mark based upon registration with the United States Patent and Trademark Office (“USPTO) (e.g. Reg. No. 1,851,977, registered August 30, 1994) and other trademark agencies throughout the world. See Compl. Annex 2. The <skechers-fr.com>, <skechershungary.net>, <skechers-lojas.com>, <skechersschuhe.com>, <skechersskonorge.com> domain names (henceforth referred to as the “Disputed Domain Names”) are identical or confusingly similar to Complainant’s mark because each of the domain names include the SKECHERS mark in its entirety, adding generic terms in different languages, country codes, and or geographic designations. Additionally, each Domain Name adds the generic top level domain (“gTLD”) “.com”.
Respondent has no legitimate interests in the Disputed Domain Names. Respondent is not commonly known by the Disputed Domain Names and Complainant has not authorized or licensed Respondent any rights in the SKECHERS mark. Additionally, Respondent does not use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the Disputed Domain Names to sell counterfeit goods on their resolving infringing websites.
Respondent registered and uses the Disputed Domain Names in bad faith. Respondent registered the Disputed Domain Names in order to create a likelihood of confusion with Complainant’s mark and divert customers for commercial gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the SKECHERS mark prior to the registration of the Disputed Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the lifestyle and performance footwear industry.
2. Complainant has established its rights in the SKECHERS mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO) (e.g. Reg. No. 1,851,977, registered August 30, 1994) and other trademark agencies throughout the world.
3. Respondent registered the disputed domain names on the following dates:
February 22, 2023 - <skechers-fr.com>;
February 23, 2023 - <skechershungary.net> and <skechersschuhe.com>;
February 21, 2023 - <skechers-lojas.com>; and
April 18, 2022 - <skechersskonorge.com>.
4. Respondent has caused the disputed domain names to be used to sell counterfeit goods on its resolving website.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SKECHERS mark (e.g. Reg. No. 1,851,977, registered August 30, 1994) based upon registration with the USPTO and other trademark agencies throughout the world. See Compl. Annex 2. Registration of a mark with multiple trademark agencies throughout the world, including the USPTO, is generally a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant provides evidence of its registration of the SKECHERS mark with trademark agencies throughout the world, including the USPTO, the Panel finds that Complainant has rights in the SKECHERS mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s SKECHERS mark. Complainant submits that the disputed domain names are identical or confusingly similar to Complainant’s mark. The addition of generic terms, country codes, geographic designations, and gTLDs all fail to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). The addition of a generic top level domain to a mark therefore does not differentiate the domain from said mark under Policy ¶ 4(a)(i). Here, each of the domain names include the SKECHERS mark in its entirety, adding generic terms in different languages, country codes, and or geographic designations. Additionally, each domain name adds the “.com” gTLD. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)).
(a) Respondent has chosen to take Complainant’s SKECHERS mark and to use it in its domain names in its entirety, adding generic terms in different languages, country codes, and or geographic designations which cannot negate the confusing similarity between the domain names and the trademark;
(b) Respondent registered the disputed domain names on the following dates:
February 22, 2023 - <skechers-fr.com>;
February 23, 2023 -<skechershungary.net> and <skechersschuhe.com>;
February 21, 2023 - <skechers-lojas.com>; and
April 18, 2022 - <skechersskonorge.com>;
(c) Respondent has caused the disputed domain names to be used to sell counterfeit goods on its resolving website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by any of the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the SKECHERS mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under 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). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names lists “Klaus Wirtz” and “Kuala Lumpur” as the domain names’ registrant. See Registrar Email Verifications. Complainant further submits that it has not licensed or otherwise authorized Respondent to use Complainant’s SKECHERS mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the Respondent is using the SKECHERS trademark on its websites to sell suspected counterfeit Skechers products that compete directly with Complainant's business. Doing so fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See 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.”). Here, Complainant provides printout evidence of the disputed domain names’ resolving websites and comparison charts of the various similarities for reference. See Compl. Annexes 5, 6, 7, 8, and 10. So, as the Panel agrees, it finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent is capitalizing on consumer recognition of the SKECHERS mark to create websites and sell SKECHERS branded shoes and products. Creating this likelihood of confusion to sell counterfeit products is evidence of bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015) (“Use of a domain name to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).”); see also Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business; “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Here, Complainant provides printout evidence of the disputed domain names’ resolving websites and comparison charts of the various similarities for reference. See Compl. Annexes 5, 6, 7, 8, and 10. Accordingly, as the Panel agrees, it finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s rights in the SKECHERS mark prior to registration of the disputed domain names. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use of the domain names per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the SKECHERS mark prior to registration of the disputed domain names based upon Respondent’s exact reproduction of the well-known SKECHERS mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SKECHERS mark and in view of the conduct that Respondent has
engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers-fr.com>, <skechershungary.net>, <skechersschuhe.com>,<skechers-lojas.com> and <skechersskonorge.com>
domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC, Panelist
Dated: July 18, 2023
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