Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Tobias Gottlieb / Anna Veronica / Obeirg Melikssa / Client Care / Web Commerce Communications Limited
Claim Number: FA2202001983230
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. Respondents are Tobias Gottlieb, Germany; Anna Veronica, Germany; Obeirg Melikssa, Germany; and Client Care / Web Commerce Communications Limited, Malaysia ("Respondents").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skechersbe.org> and <skecherswinkelsnederland.org>, registered with 1API GmbH; <skechersbelgique.com>, registered with Gransy, s.r.o.; and <skecherssk.com>, 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 known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2022; the Forum received payment on February 4, 2022.
On February 7, 2022, 1API GmbH confirmed by email to the Forum that the <skechersbe.org> domain name is registered with 1API GmbH and that Respondent Tobias Gottlieb is the current registrant of that name, and that the <skecherswinkelsnederland.org> domain name is registered 1API GmbH and that Respondent Anna Veronica is the current registrant of that name. In each instance 1API GmbH has verified that the registrant is bound by the 1API GmbH 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"). Equivalent confirmations were received on February 8, 2022, from Gransy, s.r.o. concerning the <skechersbelgique.com> domain name and Respondent Obeirg Melikssa; and from ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED concerning the <skecherssk.com> domain name and Respondent Client Care / Web Commerce Communications Limited.
On February 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2022 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts, and to postmaster@skechersbe.org, postmaster@skecherswinkelsnederland.org, postmaster@skechersbelgique.com, and postmaster@skecherssk.com. Also on February 10, 2022, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts.
Having received no response from Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
Complainant alleges that the disputed domain names are under common control. 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainant notes inter alia that the four disputed domain names resolve to websites that contain the same layout and substantially identical content, in each instance offering footwear bearing Complainant's SKECHERS trademark without authorization, and have virtually identical "Contact Us" pages. Complainant provides a detailed table listing numerous points of similarity shared by all of the websites. The Panel also notes the similarities among the domain names themselves (all of which combine the SKECHERS mark with a geographic term or abbreviation, with one of them also adding the Dutch word "winkels," which translates to "stores"), and the fact that the four domain names appear to share the same hosting and nameserver providers.
Respondents have not come forward to dispute the allegation that they are one entity acting under multiple aliases, nor to object to the inclusion of all four domain names in this proceeding. Under the circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Dennis McKenzie / Kassandra Kucera / Brian Chavez / Mandy Gloeckner / Kathryn Wimmer / Jackie Matte / Daniel Quinones / Client Care / Web Commerce Communications Ltd., FA 1968883 (Forum Nov. 18, 2021) (treating domain names as being under common control in similar circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Barbara Metzger / Lucas Farber, FA 1936247 (Forum Apr. 15, 2021) (same).
A. Complainant
Complainant's footwear and apparel products have been sold worldwide under the SKECHERS trademark for more than 25 years. Complainant owns trademark registrations for SKECHERS in standard character form in the United States, the European Union, and other jurisdictions.
Respondents registered the disputed domain names <skechersbe.org>, <skecherswinkelsnederland.org>, <skechersbelgique.com>, and <skecherssk.com> in 2021. They are being used for similar websites that display the SKECHERS mark and photographs of what Complainant suspects to be counterfeit versions of its products, and that offer these products for sale. Complainant states that Respondents are not commonly known by the disputed domain names; are not licensees, authorized retailers, or distributors of Complainant's products; and are not authorized to use Complainant's mark.
Complainant contends on the above grounds that each of the disputed domain names is confusingly similar to its SKECHERS mark; that Respondents lack rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondents
Respondents failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondents lack rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used 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:
(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <skechersbe.org>, <skecherswinkelsnederland.org>, <skechersbelgique.com>, and <skecherssk.com> incorporates Complainant's registered SKECHERS trademark, adding a geographic term or abbreviation and in one instance a generic term ("winkels," Dutch for "stores"), and appending the ".org" or ".com" top-level domain. These additions do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Dennis McKenzie et al., FA 1968883, supra (finding <skechersse.org> and similar domain names confusingly similar to SKECHERS); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Sonja Schneider, FA 1931773 (Forum Mar. 12, 2021) (finding <skechersnederland.com> confusingly similar to SKECHERS); Koninklijke KPN N.V. v. Gaststaette Rasthaus, DNL2016-0053 (WIPO Dec. 2, 2016) (finding <kpnwinkels.nl> confusingly similar to KPN). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that a Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered mark without authorization, and their sole apparent use has been for websites promoting the sale of competing and likely counterfeit products, in a manner obviously intended to create the false impression that the websites are connected with or authorized by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Dennis McKenzie et al., FA 1968883, supra (finding lack of rights or interests in similar circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Barbara Metzger / Lucas Farber, FA 1936247, supra (same); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Sonja Schneider, FA 1931773, supra (same).
Complainant has made a prima facie case that Respondents lack rights and legitimate interests in the disputed domain names, and Respondents have failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondents lack rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondents registered domain names incorporating and obviously intended to create confusion with Complainant's mark, and are using them to promote competing and likely counterfeit goods. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Dennis McKenzie et al., FA 1968883, supra (finding bad faith in similar circumstances); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Barbara Metzger / Lucas Farber, FA 1936247, supra (same); Skechers U.S.A., Inc. & Skechers U.S.A., Inc. II v. Sonja Schneider, FA 1931773, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersbe.org>, <skecherswinkelsnederland.org>, <skechersbelgique.com>, and <skecherssk.com> domain names be TRANSFERRED from Respondents to Complainant.
David E. Sorkin, Panelist
Dated: March 8, 2022
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