NATIONAL ARBITRATION FORUM

DECISION

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Sheng Li Liu / Hong Qing Dong

Claim Number: FA2502002142329

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, California, USA. Respondent is Sheng Li Liu / Hong Qing Dong ("Respondent"), China.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <skechersshoesusa.com> and <skechersshoesusa.net>, registered with Cloud Yuqu Llc and 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.

James Bridgeman SC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 26, 2025; Forum received payment on February 26, 2025.

On February 27, 2025, Cloud Yuqu Llc and Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <skechersshoesusa.com> and <skechersshoesusa.net> domain names are registered with Cloud Yuqu Llc and Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Cloud Yuqu Llc and Chengdu West Dimension Digital Technology Co., Ltd. have verified that Respondent is bound by the Cloud Yuqu Llc and Chengdu West Dimension Digital Technology Co., Ltd. registration agreements 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 3, 2025, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of March 24, 2025 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@skechersshoesusa.com, postmaster@skechersshoesusa.net. Also on March 3, 2025, the Chinese and English 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 in Chinese and English.

On March 25, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain names be transferred from Respondents to Complainant.

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

Pursuant to UDRP Rule 11(a), absent an agreement, the language of the Registration Agreement dictates the language of the proceeding.

Complainant acknowledges that the registration agreements for the disputed domain names <skechersshoesusa.com> and <skechersshoesusa.net> domain names are each in Chinese, which would suggest that these proceedings be undertaken in Chinese. On the other hand, Rule 11(a) also allows the Panel to determine the language of the proceeding having considered all relevant circumstances.

Complainant submits that it is established practice for the Panel to take Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding. See, Deutsche Messe AG v. Kim Hyungho, WIPO Case D2003-0679 ("The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties' level of comfort[] with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.").

Complainant requests that the proceedings be conducted in English and urges the Panel to consider the following points in making its decision: (a) the disputed domain names target the Complainant, a United States company and its U.S. registered trademark; (b) the disputed domain names include the English word "shoes" and the geographical designation USA; (c) the disputed domain names resolve to sites that are exclusively in English and the prices of products offered on these sites are in USD$; (d) conducting these proceedings in a language other than English will cause Complainant to incur significant additional burden and delay in obtaining the requisite translations of the Complaint and other related documents.

Complainant argues that firstly, there is ample authority allowing administrative proceedings to proceed in English where the disputed domain name targets a U.S.-based company. See, e.g. 7-Eleven, Inc. v. Lin Jin Jiang, FA 1959607 (Forum Sept. 15, 2021); LoanDepot.com, LLC v. Zhichao Yang, FA 1924673 (Forum Jan. 12, 2021); Morgan Stanley v. Peng Bi / bi Peng, FA 1709188 (Forum Feb. 16, 2017).

Secondly, it is contended that the disputed domain names <skechersshoesusa.com> and <skechersshoesusa.net> clearly target English-speaking US customers, given that they consist of the word "shoes" and "USA" and are registered in the generic Top Level Domains ("gTLD") <.com> and <.net" gTLDs that primarily target English-speaking Internet users. The corresponding websites are also entirely in English, and the products offered on these sites are listed in US dollars. Hence, it is reasonable to conclude that Respondents have sufficient command of the English language.

Thirdly, Complainant argues that it is a U.S.-based company and, accordingly, undertakes its business activities in English, Complainant is not familiar with the Chinese language and does not speak or write in Chinese. Requiring these proceedings be undertaken in both English and Chinese would impart substantial burden and additional costs upon the Complainant, unduly delaying the process, in contradiction to the stipulations of Rules 10(b) and 10(c).

The Complainant asserts that the evidence of the record supports a decision to allow these proceedings to be conducted in English in alignment with the Policy objectives of Rules 10(b) and 10(c) and requests that the Panel exercise its authority under Rule 11 to allow these proceedings to continue in English.

In the absence of any Response from either Respondent, having considered the Rules, and the submissions of the Complainant, this Panel accepts the Complainant's arguments in full and finds that the appropriate language of this proceeding should be English. Respondents clearly are familiar with the English language, as it is the language in which they are doing business on their website, and it would be both prejudicial to the Complainant, and to the duty to proceed fairly and expeditiously with this Complaint if the language were to follow the language of the registration agreement. It is for circumstances such as this case that Rule 11(a) affords the Panel the discretion to determine the language of the proceeding having considered all relevant circumstances.

This Panel finds therefore that the Complainant's application to proceed in the English language is granted.

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

Consolidation can be granted in cases of multiple respondents where the contents of the websites in dispute were substantially identical. See CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071. Moreover, as the Panel noted in Snap Inc. v. Domain Administrator et al. FA 1933412 (Forum May 11, 2021). "even if the panel ultimately does not accept that the domain name holder is in fact the same, [it] can still allow the single complainant to proceed on the basis of its consolidation power in paragraph 10(e) provided there is a sufficient nexus between the disputed domain names to justify consolidation..."

Complainant adds that the disputed domain names use an identical naming pattern, consisting of Complainant's SKECHERS trademark, the word "shoes" and the geographical designation "USA." The disputed domain names also resolve to websites that contain the same layout and design elements and offer footwear bearing the Complainant's SKECHERS trademark without the Complainant's authorization or approval.

Listing the similarities, Complainant submits that each website has:

· Complainant's SKECHER'S logo in the upper lefthand corner of their homepages, in the same stylization and color as the logo used on Skechers' official website;

· each website purports to market the same two categories of footwear – WOMEN / MEN;

· each website has identical icons for "Women", "Men", a search bar, account and a shopping cart, and the same photo banner advertising summer favorite sale;

· each website has an identical photo banner advertising Free Shipping Orders $50+;

· each website has a section displaying the same 32 photos of discounted SKECHERS footwear;

· each website has a section with links to nine pages with the same titles: women's athletic shoes, women's casual shoes, women's boots, women's sandals, women's slip-ons, men's athletic shoes, men's casual shoes page, men's boots and men's slip-ons;

· each website has a customer service section with links to four pages containing a shipping page, F.A.Q page, privacy page and size chart page;

· each website has social media icons for Facebook, Twitter, Instagram, and Pinterest;

Based on the elements of similarity outlined above, Complainant submits that it is more likely than not that the disputed domain names are under the control of a single entity and consolidation is appropriate in this matter.

In the absence of any Response from either Respondent, having considered the Rules, and the submissions of the Complainant, this Panel accepts the Complainant's arguments and finds that while each of the disputed domain names were registered on different dates, with different registrars, each of the disputed domain names are identical, albeit on different gTLDs and each resolves to the same or an identical website.

So this Panel finds on the balance of probabilities that the disputed domain names are each owned and controlled by the same entity or by two entities acting in concert (hereinafter referred to as "Respondents").

Furthermore, this Panel consolidates the two disputes by exercising its general powers granted by Rules ¶ 10.

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the SKECHERS mark established by its ownership of an international portfolio of trademark registrations including the United States registered trademark described below and submits that it is a global leader in the lifestyle and performance footwear industry. Complainant asserts that its company stocks have been publicly traded on the New York Stock Exchange under the symbol SKX since 1999. Complainant's footwear products are sold in approximately 180 countries and territories around the world through over 5,000 Skechers stores and online through its website at <www.skechers.com>.

Complainant adds that its products are also available through department stores, specialty stores, athletic specialty shoe stores, independent retailers, and internet retailers worldwide. Furthermore, Complainant asserts that SKECHERS is the house mark of the company that appears on Complainant's products and on the face of Complainant's marketing and promotional materials.

Complainant firstly alleges that the disputed domain names are confusingly similar to Complainant's SKECHERS mark because they each include the SKECHERS mark in its entirety, adding generic terms and / or geographic designations.

Various Panels have found that the addition of a generic term to a complainant's mark does not remove a disputed domain from the realm of confusingly similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognisable 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."). It is furthermore contended that the addition of a geographic term to Complainant's SKECHERS mark does not remove the disputed domain from the realm of confusing similarity. See Starbucks Corporation d/b/a Starbucks Coffee Company v. Waseem A Ali / Micron Web Services, FA 1785616 (Forum June 8, 2018) (finding the <starbucksreal.com> domain name to be confusingly similar to the STARBUCKS mark, as "the addition of the generic term 'real' to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.").

Complainant next alleges that Respondents have no rights or legitimate interests in the disputed domain names arguing that:

· each of the disputed domain names is confusingly similar to Complainant's SKECHERS mark;

· Respondents registered the disputed domain names in 2024, long after Complainant began using the SKECHERS mark. The SKECHERS mark is an arbitrary term which has no meaning outside its use as a means to identify Complainant as the source of Complainant's products;

· upon information and belief, Respondents are not licensees, authorized retailers, or distributors of Complainant's products. Nor are Respondents otherwise authorized to use the name or the SKECHERS trademark for any purpose;

· upon information and belief, Respondents are not commonly known by the disputed domain names. Public WHOIS information for the registrants has been redacted for privacy;

· according to information supplied by the registrars, the disputed domain names are registered to Sheng Li Liu and Hong Qing Dong, and there is no other evidence in the record to suggest that the Respondents were commonly known by the disputed domain names. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that Respondent was not commonly known by the disputed domain names because the WHOIS information listed "Andrew Kaner c/o Electromatic a/k/a/ Electromatic Equip't" as the registrant and no other evidence in the record suggests that Respondent was commonly known by the domain names in dispute). Printouts of the relevant WHOIS information are attached as an annex to the Complaint.

Complainant thirdly alleges that the disputed domain names were registered and are being used in bad faith arguing:

The very nature of Respondents' registration of the disputed domain names evidences bad faith. Upon information and belief, Respondents knowingly registered the disputed domain names containing an exact reproduction of the well-known SKECHERS mark to capitalize on consumer recognition of the SKECHERS mark. Complainant is engaged in the business of designing, developing, and marketing footwear and apparel products. The fact that Respondents chose to register an exact reproduction of Complainant's SKECHERS mark in the gTLDs <.com> and <.net> and are using their websites to sell SKECHERS branded shoes indicates that Respondents had knowledge of Complainant and Complainant's business.

Moreover, the designation SKECHERS is unique and arbitrary such that it is unlikely the Respondents devised the term on their own. This factor alone weighs in favor of finding bad faith against the Respondents.

Complainant concludes that the websites to which the disputed domain names resolve, screen captures of which are exhibited in an annex to the Complaint, illustrate that Respondents' websites prominently display the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. Respondents are using the SKECHERS trademark on their websites to sell suspected counterfeit Skechers products that compete directly with Complainant's business; and argues that consequently unsuspecting consumers may be duped into believing that the products displayed on Respondents' websites are genuine SKECHERS products.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a footwear manufacturer using the SKECHERS trademark for which it owns a portfolio of trademark registrations including United States registered trademark SKECHERS, registration number 1,851,977, registered on the Principal Register on August 30, 1994 for goods in international class 25.

Complainant has an established Internet presence and maintains its principal website at <www.skechers.com>.

The disputed domain name <skechersshoesusa.com> was registered on March 26, 2024, and the disputed domain name <skechersshoesusa.net> was registered on October 17, 2024 and they resolve to the same, or identical websites that purport to offer Complainant's goods for sale at hugely discounted prices.

There is no information available about Respondents, except for that provided in the Complaint, the Registrars' WhoIs records for the disputed domain names, and the information provided by the Registrars in response to the request by the Forum for details of the registration of the disputed domain names for the purposes of this proceeding.

DISCUSSION

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 Respondents' 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 provided uncontested convincing evidence of its rights in the SKECHERS mark established by its ownership of the portfolio of registered trademarks described above. Additionally Complainant has established that it has rights in the mark through extensive use since at least August 30, 1994, in its footwear business, and that it has established an international goodwill and reputation, in the SKECHERS mark.

The disputed domain names <skechersshoesusa.com> and <skechersshoesusa.net>, are each composed of Complainant's SKECHERS mark in combination with the descriptive term "shoes", the country name USA and the generic Top-Level Domain ("gTLD") extensions <.com> and <.net> respectively.

Complainant's registered trademark is clearly recognizable as the initial and only distinctive element in each of the disputed domain names.

The presence of neither the descriptive element "shoes" nor the country name USA prevent a finding of confusing similarity between the disputed domain names and Complainant's mark. The element "shoes" is in each case descriptive of Complainant's goods, and element "USA" would be taken by Internet users and infer that the disputed domain names are each being used to target the market in the USA, where Complainant carries son business using its registered trademark.

In the circumstances of this case the gTLD extensions <.com> and <.net> within the disputed domain names may be ignored for the purposes of comparing Complainant's mark and the respective disputed domain name, because it would be considered by Internet users to be a necessary technical element for a domain name registration.

This Panel finds therefore that each of the disputed domain names is identical to the SKECHERS mark in which the Complainant has rights and Complainant has established the first element of the test in Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has made out a prima facie case that the Respondents have no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

Respondents have failed to discharge that burden and therefore this Panel must find that neither Respondent has rights or legitimate interests in the disputed domain names.

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant's registered trademark SKECHERS mark is clearly recognizable as the initial and only element within each of the disputed domain names.

Complainant's registered trademark rights date back to August 30, 1994, and long predate the registration of the disputed domain names in 2024.

Furthermore, each of the disputed domain names are composed of Complainant's distinctive mark in combination with the word "shoes" which infers that the registrant of each of the disputed domain names had actual knowledge of Complainant, its footwear business and its SKECHERS trademark when the disputed domain names were chosen and registered.

There appears to be no plausible reason for registering either of the disputed domain names other than to create an association with Complainant and its SKECHERS mark.

On the balance of probabilities, therefore, this Panel finds that the disputed domain names were each chosen and registered with Complainant's mark in mind with the intention of taking predatory advantage of Complainant's rights and goodwill in the SKECHERS mark.

The uncontested evidence in the form of the screen captures of the website, or the identical websites as the case may be, to which the disputed domain names resolve, shows that Respondents are purporting to offer Complainant's footwear for sale at discounts that are unlikely to be commercially possible.

Such use of Complainant's trademark within the disputed domain names as the address of the Respondents' website, or websites, is on the balance of probabilities intentionally intended to attract and confuse Internet users and cause them to divert their Internet traffic intended for Complainant and misdirect it to Respondents' website, or websites, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondents' web site or websites, which constitutes bad faith for the purposes of the Policy.

As this Panel has found that each of the disputed domain names was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) in respect of both.

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 <skechersshoesusa.com> and <skechersshoesusa.net> domain names be TRANSFERRED from Respondents to Complainant.

James Bridgeman SC, Panelist

Dated: March 28, 2025