Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Joseph Graham / Client Care / Web Commerce Communications Limited / Susanne WEXLER / Markus BAUM
Claim Number: FA2306002047897
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 Joseph Graham / Client Care / Web Commerce Communications Limited / Susanne WEXLER / Markus BAUM (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skecherargentina.com>, <skecher-argentina.com>, <skecher-costarica.com>, <skechercostarica.com>, <skechersarchfitsaleuk.com>, <skecherscomindia.com>, <skecherscomph.com>, <skecherscomromania.com>, <skecherscomtr.com>, <skechers-cz.com>, <skechers-damske.com>, <skechers-debrecen.com>, <skechers-deutschland.com>, <skechersgowalksouthafrica.com>, <skechersieireland.com>, <skechersinnewyork.com>, <skechersisraelshoes.com>, <skechers-obuv.com>, <skechers-oslo.com>, <skechersoutleturuguay.com>, <skechersplazaindonesia.com>, <skecherssandals-canada.com>, <skecherssaudi.com>, <skechersscalomilano.com>, <skechersshoesuaeonline.com>, <skecherswinkelsin-nederland.com>, <tenisskechers-brasil.com>, <wwwskecherscomitalia.com>, (‘the Domain Names’) registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NETIM SARL.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on June 7, 2023; Forum received payment on June 7, 2023.
On June 8, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NETIM SARL confirmed by e-mail to Forum that the <skecherargentina.com>, <skecher-argentina.com>, <skecher-costarica.com>, <skechercostarica.com>, <skechersarchfitsaleuk.com>, <skecherscomindia.com>, <skecherscomph.com>, <skecherscomromania.com>, <skecherscomtr.com>, <skechers-cz.com>, <skechers-damske.com>, <skechers-debrecen.com>, <skechers-deutschland.com>, <skechersgowalksouthafrica.com>, <skechersieireland.com>, <skechersinnewyork.com>, <skechersisraelshoes.com>, <skechers-obuv.com>, <skechers-oslo.com>, <skechersoutleturuguay.com>, <skechersplazaindonesia.com>, <skecherssandals-canada.com>, <skecherssaudi.com>, <skechersscalomilano.com>, <skechersshoesuaeonline.com>, <skecherswinkelsin-nederland.com>, <tenisskechers-brasil.com>, <wwwskecherscomitalia.com > Domain Names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and NETIM SARL and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and NETIM SARL have verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; and NETIM SARL 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 June 9, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 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@skecherargentina.com, postmaster@skecher-argentina.com, postmaster@skecher-costarica.com, postmaster@skechercostarica.com, postmaster@skechersarchfitsaleuk.com, postmaster@skecherscomindia.com, postmaster@skecherscomph.com, postmaster@skecherscomromania.com, postmaster@skecherscomtr.com, postmaster@skechers-cz.com, postmaster@skechers-damske.com, postmaster@skechers-debrecen.com, postmaster@skechers-deutschland.com, postmaster@skechersgowalksouthafrica.com, postmaster@skechersieireland.com, postmaster@skechersinnewyork.com, postmaster@skechersisraelshoes.com, postmaster@skechers-obuv.com, postmaster@skechers-oslo.com, postmaster@skechersoutleturuguay.com, postmaster@skechersplazaindonesia.com, postmaster@skecherssandals-canada.com, postmaster@skecherssaudi.com, postmaster@skechersscalomilano.com, postmaster@skechersshoesuaeonline.com, postmaster@skecherswinkelsin-nederland.com, postmaster@tenisskechers-brasil.com, postmaster@wwwskecherscomitalia.com. Also on June 9, 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 10, 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.” 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.” All of the Domain Names resolve to websites that contain common layout and design elements, and are all offering, without authorization or approval, footwear bearing the Complainant's SKECHERS trademark. Accordingly noting all the similarities the Panel finds that this Complaint may relate to all of the Domain Names because it is more likely than not that they are registered by the same domain name holder.
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 2022 or 2023 are confusingly similar to the Complainant’s SKECHERS trade mark containing it in its entirety or a misspelling of it and adding various generic terms see list below (‘the Generic Terms’) and/or other trade marks of the Complainant (Go Walk and Archfit) and the gTLD .com which do not distinguish the Domain Names from the Complainant’s mark.
List of Generic Terms Added to Complainant's SKECHERS or the Confusingly Similar SKECHER mark in Domain Names include: the country Argentina, the country Costa Rica, the country India, the country code “ph” for the Philippines, the country Romania, the country code “tr” for Turkey, the country code “cz” for the Czech Republic, the generic term “damske” in Slovak which translates to “ladies’” in English, the Hungarian city of Debrecen, the country “Deutschland” in German which translates to Germany, the country South Africa, the country code “ie”, the country Ireland, the generic word “in”, the U.S. state New York, the country Israel, the generic term “shoes”, the generic term “obuv” in Slovak which translates to “footwear” in English, the capital city of Norway Oslo, the generic term “outlet”, the country Uruguay, the generic term “plaza”, the country Indonesia, the generic term sandals, the country Canada, the term “Saudi” for the country name Kingdom of Saudi Arabia, the generic term “sale”, the country code “uk” for the United Kingdom, the generic term “scalo” and “Milano” in Italian which translate to “airport” and the Italian city “Milan” in English, the generic term “online”, the abbreviated country name “UAE” for the United Arab Emirates, the generic terms “winkels” and the country name “Nederland” in Dutch which translate to the generic terms “stores” and the country name Netherlands, the generic term “tenis” in Portuguese which translates to “tennis” in English, the country name “Brasil” in Portuguese which translates to Brazil in English, the abbreviation “www” for the world wide web and/or the country “Italia” in Italian which translates to the country Italy in English.
Respondent is not commonly known by the Domain Names and is not authorised 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 selling of shoes purporting to be Skechers on the site shows the Respondent is aware of the Complainant and its business. Since Internet users will be duped this is not legitimate. It is 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 2022 or 2023 have been used for competing web sites purporting to sell the Complainant’s products under the Complainant’s mark and logo used as a masthead so that the sites 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 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) or a misspelling of it, one or more of the Generic Terms and/or the Complainant’s brands ARCHFIT or GO WALK 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.”). Nor does adding the names of other brands of the Complainant or slightly misspelling the Complainant’s SKECHERS mark by leaving off the letter ‘s’.
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 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 authorised 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 of the Domain Names is commercial and so cannot be legitimate non commercial 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 trade marks 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). Further the sheer number of domain names registered featuring the Complainant’s mark or a misspelling of it shows a pattern of bad faith conduct.
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)(ii),(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skecherargentina.com>, <skecher-argentina.com>, <skecher-costarica.com>, <skechercostarica.com>, <skechersarchfitsaleuk.com>, <skecherscomindia.com>, <skecherscomph.com>, <skecherscomromania.com>, <skecherscomtr.com>, <skechers-cz.com>, <skechers-damske.com>, <skechers-debrecen.com>, <skechers-deutschland.com>, <skechersgowalksouthafrica.com>, <skechersieireland.com>, <skechersinnewyork.com>, <skechersisraelshoes.com>, <skechers-obuv.com>, <skechers-oslo.com>, <skechersoutleturuguay.com>, <skechersplazaindonesia.com>, <skecherssandals-canada.com>, <skecherssaudi.com>, <skechersscalomilano.com>, <skechersshoesuaeonline.com>, <skecherswinkelsin-nederland.com>, <tenisskechers-brasil.com>, <wwwskecherscomitalia.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 10, 2023
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