Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Qiu Xiaofeng
Claim Number: FA2307002054058
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 Qiu Xiaofeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersaustraliastores.com>, <skechersbelgiquestore.com>, <skechersbrasilonline.com>, <skecherscolombiashop.com>, <skecherseestioutlet.com>, <skechershungarysale.com>, <skechersjapanstore.com>, <skecherskuwaitsale.com>, <skecherslietuvastore.com>, <skechersmexicosale.com>, <skechersnorgeonline.com>, <skechersonlineargentina.com>, <skechersonlinebelgie.com>, <skechersonlinedanmark.com>, <skechersonlineisrael.com>, <skechersoutletlatvija.com>, <skechersoutletspain.com>, <skechersperushop.com>, <skechersportugalstore.com>, <skechersshoesbulgaria.com>, <skechersshoeshrvatska.com>, <skechersslovenijasale.com>, <skecherssouthafricastore.com>, <skecherssrbijaoutlet.com>, <skechersstorenederland.com>, <skechersstoreschweiz.com>, <skecherssuomionline.com>, <skecherstürkiye.com>, <skechersuaeoutlets.com>, and <skechersuruguayoutlet.com>, (‘the Domain Names’) registered with Paknic (Private) Limited.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on July 20, 2023; Forum received payment on July 21, 2023.
On July 31, 2023, Paknic (Private) Limited confirmed by e-mail to Forum that the <skechersaustraliastores.com>, <skechersbelgiquestore.com>, <skechersbrasilonline.com>, <skecherscolombiashop.com>, <skecherseestioutlet.com>, <skechershungarysale.com>, <skechersjapanstore.com>, <skecherskuwaitsale.com>, <skecherslietuvastore.com>, <skechersmexicosale.com>, <skechersnorgeonline.com>, <skechersonlineargentina.com>, <skechersonlinebelgie.com>, <skechersonlinedanmark.com>, <skechersonlineisrael.com>, <skechersoutletlatvija.com>, <skechersoutletspain.com>, <skechersperushop.com>, <skechersportugalstore.com>, <skechersshoesbulgaria.com>, <skechersshoeshrvatska.com>, <skechersslovenijasale.com>, <skecherssouthafricastore.com>, <skecherssrbijaoutlet.com>, <skechersstorenederland.com>, <skechersstoreschweiz.com>, <skecherssuomionline.com>, <skecherstürkiye.com>, <skechersuaeoutlets.com>, and <skechersuruguayoutlet.com> Domain Names are registered with Paknic (Private) Limited and that Respondent is the current registrant of the names. Paknic (Private) Limited has verified that Respondent is bound by the Paknic (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 August 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@skechersaustraliastores.com, postmaster@skechersbelgiquestore.com, postmaster@skechersbrasilonline.com, postmaster@skecherscolombiashop.com, postmaster@skecherseestioutlet.com, postmaster@skechershungarysale.com, postmaster@skechersjapanstore.com, postmaster@skecherskuwaitsale.com, postmaster@skecherslietuvastore.com, postmaster@skechersmexicosale.com, postmaster@skechersnorgeonline.com, postmaster@skechersonlineargentina.com, postmaster@skechersonlinebelgie.com, postmaster@skechersonlinedanmark.com, postmaster@skechersonlineisrael.com, postmaster@skechersoutletlatvija.com, postmaster@skechersoutletspain.com, postmaster@skechersperushop.com, postmaster@skechersportugalstore.com, postmaster@skechersshoesbulgaria.com, postmaster@skechersshoeshrvatska.com, postmaster@skechersslovenijasale.com, postmaster@skecherssouthafricastore.com, postmaster@skecherssrbijaoutlet.com, postmaster@skechersstorenederland.com, postmaster@skechersstoreschweiz.com, postmaster@skecherssuomionline.com, postmaster@skecherstürkiye.com, postmaster@skechersuaeoutlets.com, postmaster@skechersuruguayoutlet.com. Also on August 2, 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 August 23, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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 proceedings, there are two 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.” Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. As such, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II are both in privity with each other. The Panel finds that the Complainants have satisfied the nexus required.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged 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.” The Domain Names point to extremely similar web sites save they are in different languages. The Respondent has not answered this Complainant or challenged the assertions that the Domain Names are all held by the same entity. The Panel finds it more likely than not that the Domain Names have been registered by the same Respondent and this Complaint may proceed against all of the Domain Names.
A. Complainant
The Complainant owns the trade mark SKECHERS registered, inter alia, in the USA with first use recorded as 1993.
The Domain Names registered in 2023 are confusingly similar to the Complainant’s SKECHERS trade mark containing it in its entirety and adding various generic terms in different languages (‘the Generic Terms’) and the gTLD “.com” none of which distinguishes any of the Domain Names from the Complainant’s mark.
Respondent is not commonly known by the Domain Names and is not authorized by the Complainant. The web sites connected with the Domain Names are using the Complainant’s trade mark and logo as a masthead to purport to offer the Complainant’s products. The material on the sites shows the Respondent is aware of the Complainant and its business. This is opportunistic registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark SKECHERS registered, inter alia, in the USA with first use recorded as 1993.
The Domain Names registered in 2023 are connected to sites using the Complainant’s trade mark and logo as a masthead to purport to offer the Complainant’s products so as to appear to be official sites of the Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Domain Names consist of the Complainant's SKECHERS mark (which is registered in USA for clothing with first use recorded as 1993), one or more Generic Terms and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds generic or geographical terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). See also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy 4(a)(i) analysis.”).
The gTLD “.com” does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are all confusingly similar to the Complainant’s SKECHERS registered mark.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial and so cannot be noncommercial legitimate fair use.
The web sites attached to the Domain Names use the Complainant's SKECHERS mark and its logo as a masthead to purport to offer the Complainant’s products. They do not make it clear that there is no commercial connection with the Complainant and the web sites appear official. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names in relation to the Respondent’s sites is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant as they purport to offer the Complainant’s products under the Complainant’s logo used as a masthead giving the impression that the sites attached to the Domain Names are official.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web sites likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersaustraliastores.com>, <skechersbelgiquestore.com>, <skechersbrasilonline.com>, <skecherscolombiashop.com>, <skecherseestioutlet.com>, <skechershungarysale.com>, <skechersjapanstore.com>, <skecherskuwaitsale.com>, <skecherslietuvastore.com>, <skechersmexicosale.com>, <skechersnorgeonline.com>, <skechersonlineargentina.com>, <skechersonlinebelgie.com>, <skechersonlinedanmark.com>, <skechersonlineisrael.com>, <skechersoutletlatvija.com>, <skechersoutletspain.com>, <skechersperushop.com>, <skechersportugalstore.com>, <skechersshoesbulgaria.com>, <skechersshoeshrvatska.com>, <skechersslovenijasale.com>, <skecherssouthafricastore.com>, <skecherssrbijaoutlet.com>, <skechersstorenederland.com>, <skechersstoreschweiz.com>, <skecherssuomionline.com>, <skecherstürkiye.com>, <skechersuaeoutlets.com>, and <skechersuruguayoutlet.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: August 23, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page