Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. rongyi rongyi / rongyi
Claim Number: FA1808001800805
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 rongyi rongyi / rongyi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersshoesstore.com>, registered with NameCheap, Inc.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2018; the Forum received payment on August 9, 2018.
On August 10, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <skechersshoesstore.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2018 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@skechersshoesstore.com. Also on August 10, 2018, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two named Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
The two named Complainants in this matter are Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainant alleges that both of these named entities hold registrations of the SKECHERS mark with the USPTO.
Previous panels have interpreted the 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.
See also Montres Breguet SA, Tissot SA, Blancpain SA v. Fancy Bandwith, Fancy Bandwith Inc., D2016-1198 (WIPO August 19, 2016) (acknowledging that “the Swatch Group AG is the parent company of the Complainants Montres Breguet SA, Tissot SA, and Blancpain SA.” * * * “The Panel is of the view that the Complainants have a specific common grievance against the Respondent. In addition the Respondent has engaged in a common action that has affected the Complainants’ individual rights in a similar fashion:”)
In the present case, the Complaint states that “Complainant Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II owns numerous trademarks…” and it specifically cites USPTO Registration No. 1851977 for the trademark SKECHERS. A copy of this registration certificate is provided as an annex to the Complaint and names Skechers U.S.A., Inc. as the original owner in 1994. This annex also contains a document entitled “Notice Of Acceptance Of §8 Declaration And §9 Renewal” for the 1851977 registration in which the “Owner” is named as “Skechers U.S.A., Inc. II”. No further evidence or discussion relating to this registration is presented in the Complaint such as a printout of the USPTO assignment records for this registration or a statement addressing the relationship between the two named Complainants. A further annex is submitted which lists other national trademark registrations for the SKECHERS mark. However, each page of this annex bears the header “Skechers U.S.A., Inc. II – SKECHERS Trademark Report” and provides no further information regarding the ownership of the listed registrations. Finally, the text of the Complaint and the remaining submitted annexes do not otherwise address the relationship between the two named Complainants and do not demonstrate a link between the two entities other than the similarity in their names. As such, for the limited purposes of this UDRP case, the Panel cannot fill in the blanks and merely assume that the entity named Skechers U.S.A., Inc. has a current ownership interest in any of the cited trademark registrations or in the SKECHERS trademark itself, or that it has a current relationship with Skechers U.S.A., Inc. II. However, sufficient evidence does exist to conclude that the entity named Skechers U.S.A., Inc. II has current trademark ownership rights.
In light of the above, the Panel concludes that the only properly constituted Complainant in this case is Skechers U.S.A., Inc. II and it will proceed to issue a decision as such.
A. Complainant
Complainant Skechers U.S.A., Inc. II, is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant uses its SKECHERS mark to promote its products and services and it established rights in the mark through use since 1993 and by registration with the United States Patent and Trademark Office (“USPTO”), the China Trademark and Patent Office (“CTPO”) and other national trademark offices around the world. Respondent’s <skechersshoesstore.com> domain name is confusingly similar to Complainant’s SKECHERS mark as it merely appends the generic terms “shoes” and “store” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <skechersshoesstore.com> domain name which was created on April 3, 2017. Complainant has not licensed or otherwise authorized Respondent to use its SKECHERS mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “rongyi rongyi / rongyi” as the registrant. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use in connection with the <skechersshoesstore.com> domain name. Instead, Respondent uses the domain name to pass itself off as Complainant by resolving to a website featuring Complainant’s SKECHERS mark and offering counterfeit versions of Complainant’s products for purchase.
Respondent registered and is using the disputed domain name in bad faith. The disputed domain name was registered with full knowledge of Complainant’s rights in the SKECHERS mark. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s website at which counterfeit SKECHERS products are offered for sale. Further, Respondent is using the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it has rights in the SKECHERS mark through registration with the USPTO, the CTPO, and with various other governmental agencies around the world. Registration of a mark with a national trademark authority confers rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant has established rights in the SKECHERS mark under Policy ¶ 4(a)(i).
Next, Complainant claims that Respondent’s <skechersshoesstore.com> domain name is confusingly similar to the SKECHERS mark as it merely appends the generic terms “shoes” and “store” and uses the “.com” gTLD. The addition of generic terms and a gTLD may not sufficiently distinguish a disputed domain name from a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).) With reference to inclusion of the words “shoe” and “store” in the disputed domain name, these words actually enhance confusion with the SKECHERS mark as they directly relate to the Complainant’s sale of its products through shoe stores. See, e.g., Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum July 1, 2018) (“In fact, the domain name’s inclusion of the term ‘shop’ adds to any confusion between the domain name and Complainant’s trademark as ‘shop’ suggests Complainant’s . . . business.”)
Accordingly, the Panel concludes that Respondent’s <skechersshoesstore.com> domain name is confusingly similar to Complainant’s SKECHERS trademark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort the burden then shifts to Respondent to show that 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)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Here, Complainant alleges that Respondent fails to use the <skechersshoesstore.com> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). Specifically, Complainant alleges that Respondent uses the <skechersshoesstore.com> domain name to pass itself off as Complainant by resolving to a website featuring Complainant’s SKECHERS mark and offering counterfeit versions of Complainant’s products for purchase. In the case of Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, D2012-0136 (WIPO, April 10, 2012) the Panel addressed the question of what type of evidence might suffice to demonstrate that products offered at the website of a disputed domain name are counterfeit. First, the Panel rejected the notion that, within the context of a UDRP case, hard physical proof of counterfeiting by a “trap” purchase and subsequent product examination is required. Id. But it also agreed that mere conclusory allegations of counterfeiting, without more, may not be sufficient. Id. Ultimately, the Panel concluded that “[c]ircumstantial, rather than direct, evidence of counterfeiting may well suffice…” and it gave an example such as “branded goods offered for sale at exceptionally low prices…” Id. Another case noted that screenshots of products offered at an accused website which appear to be “of poor quality and different in design and construction from true” branded products may be accepted as evidence of counterfeiting. C. & J. Clark International Limited v. zhu yuan, FA 1486918 (Forum April 22, 2013).
In the present case, the Complaint makes conclusory statements such as “Respondent's website prominently displays the SKECHERS trademark along with photographs of counterfeit Skechers products” and “Respondent is using the SKECHERS trademark on its website to sell counterfeit Skechers products…” It also mentions that Respondent’s website contains “photographs of counterfeit Skechers products.” Although no arguments are made nor facts explicitly cited to support the assertion that the goods being offered at the <skechersshoesstore.com> website are in fact counterfeit, the Panel notes that the prices listed at Respondent’s website are significantly lower than those at which the Complainant sells its equivalent authentic products. In the absence of a response or any evidence to the contrary, this fact supports the assertion that Respondent’s goods are counterfeit or are otherwise illegitimate. Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1712001763598 (Forum January 22, 2018) (“Respondent’s <mybalancebracelets.com> domain name shows a variety of bracelets at discounted prices being sold and are advertised as Complainant’s ‘Lokai’ bracelets. See Compl. Ex. B. Therefore, the Panel finds Respondent’s attempts to sell counterfeit versions of Complainant’s products does not confer any rights or legitimate interests on Respondent per Policy ¶¶ 4(c)(i) and (iii).”) Of course, it has regularly been held that the use of a domain name to pass oneself off as a complainant and sell counterfeit products may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Spotify AB v. Haji Pacman, FA1701001713362 (Forum February 21, 2017) (finding lack of rights or legitimate interests based upon use of disputed domain name to offer counterfeit audio streaming services).
Furthermore, use of a disputed domain name to impersonate a complainant may not be considered a bona fide offer of goods and services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Emaar Properties PJSC v. Marguerite Patrie, FA 1635622 (Forum October 22, 2015) (“Respondent has failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) [where] Respondent’s website also features copyrighted photographs that were, upon information and belief, taken directly from Complainant’s website, and purports to offer hotel reservations for Complainant’s Al Manzil Hotel.”). Here, from the screenshot submitted into evidence, it is apparent that the website of the <skechersshoesstore.com> domain name is designed so as to impersonate the Complainant and pass itself off as being a legitimate site of the Complainant. The website prominently features the same graphic type font for the SKECHERS trademark as used by the Complainant, and it displays many professionally produced photographs of the Complainant’s products and their associated packaging. Finally, the site’s footer displays the notice “Copyright © 2017 SKECHERS SHOES STORE”, it displays links titled “Skechers Future“ and ”Skechers History”, and it contains the statement “We named our footwear SKECHERS” [emphasis added] as part of an explanation of the offered footwear products.
Even assuming that the SKECHERS products offered on the <skechersshoesstore.com> website are authentic, Respondent’s use of the domain name does not satisfy the test for a bona fide offering of goods or services by a distributor as set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001) for the reason that Respondent’s website contains no mention or other indication of its lack of a relationship with the Complainant. As noted above, the site’s footer and its displayed links and statements do quite the opposite – they convey the false impression that Respondent is, in fact, the Complainant.
Under the circumstances, the Panel finds that Respondent fails to make a bona fide offering of goods and services with, or a legitimate noncommercial or fair use of the <skechersshoesstore.com> domain name under Policy ¶¶ 4(c)(i) and (iii).
Next, Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its SKECHERS mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <skechersshoesstore.com> domain name lists “rongyi rongyi / rongyi” as the registrant and there is no evidence of record to indicate that Respondent is known otherwise. Therefore, the Panel concludes that Respondent is not commonly known by the <skechersshoesstore.com> domain name under Policy ¶ 4(c)(ii).
In light of the evidence presented and in the absence of any response, evidence, or other submission by the Respondent, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and is using the <skechersshoesstore.com> domain name in bad faith. Complainant argues that Respondent had actual and constructive knowledge of Complainant’s rights in the SKETCHERS mark prior to registering the <skechersshoesstore.com> domain name. According to the significant body of guidance that has developed in UDRP decisions, arguments of bad faith based on constructive notice are dependent on whether the respondent is located in a jurisdiction whose laws accept such a concept. See Limited Stores, LLC v. Infinite Wireless, D2013-1269 (WIPO August 29, 2013) ("As to the contention that the Respondent has constructive notice of the Complainant’s trade mark registration, this argument, when it works, generally only works when a respondent is located in the United States.") In the present case, the Respondent lists an address in China and there is no evidence or argument before the Panel that the concept of constructive notice is applied in the law of that jurisdiction.
Nevertheless, evidence of a respondent’s actual knowledge of a complainant's rights in a mark prior to registering the disputed domain name is adequate to underpin a finding of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Here, although the annexes to the Complaint do not address the Complainant’s use or the reputation of the SKECHERS mark, the Complaint does, at least peripherally, support this by stating that “Complainant Skechers is a multi-billion-dollar global leader”, that “Skechers' footwear products are sold in more than 160 countries and territories around the world”, and that “Complainant Skechers has also been publicly traded on the New York Stock Exchange under the symbol SKX since 1999.” Also, according to the USPTO trademark registration certificate in evidence, the mark has been in use since 1993. No evidence, argument, or other form of response has been submitted to contradict these statements. Furthermore, the content of Respondent’s <skechersshoesstore.com> website – i.e., offering SKECHERS branded footwear – clearly indicates that Respondent had actual knowledge of Complainant’s rights when the disputed domain name was registered and subsequently used.
Next, it is claimed that Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s website, and uses the domain name to create confusion with Complainant’s mark for Respondent’s commercial gain. Use of a disputed domain name to disrupt the business of a competitor is evidence of bad faith under Policy ¶4(b)(iii). So a preliminary question arises as to whether the Respondent is a competitor of Complainant. In light of its use of an impersonation website that appears to be offering counterfeit goods, the answer is yes. See Manolo Blahnik International Limited, Mr. Manolo Blahnik, and MB Foundation Limited v. chen chen, FA1807001796635 (Forum August 10, 2018) (where the respondent offered counterfeit goods or was passing itself off as Complainant or an authorized representative thereof, the Panel found that “Respondent is clearly a competitor of Complainant.”). Having satisfied that threshold, it is clear that the <skechersshoesstore.com> domain name was registered primarily for the purpose of disrupting the sale of Complainant’s legitimate products. See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii).”)
Complainant also asserts, in line with Policy ¶ 4(b)(iv), that the Respondent intentionally attracts, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant SKECHERS trademark. If the SKECHERS goods offered at the Respondent’s website are, in fact, counterfeit or otherwise illegitimate, then the use of the <skechersshoesstore.com> domain name fits within this description. See H-D Michigan, LLC v. Ross, FA0903001250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates a likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion, thus demonstrating bad faith per Policy ¶ 4(b)(iv)).
Nevertheless, by copying the type font of Complainant’s SKECHERS mark and using copied product photos and other indicia such as a misleading copyright notice and website links that reference the SKECHERS mark, Respondent intentionally uses its <skechersshoesstore.com> domain name to create a likelihood of confusion with such mark for the purpose of attracting customers to its website. This activity supports a finding of bad faith under Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) (“The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant’s own, as well as Complainant’s copyrighted images and text in an attempt to pass itself off as Complainant.”)
With no opposing evidence or other submission before it, the Panel finds it reasonable to conclude that the Respondent registered and uses the <skechersshoesstore.com> domain name to impersonate the Complainant. Therefore, this domain name is used for commercial gain based upon confusion with the SKECHERS mark in bad faith under Policy ¶ 4(b)(iv) and, thus, ¶ 4(a)(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 <skechersshoesstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: September 5, 2018
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