Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Web Commerce Communications Limited / Client Care
Claim Number: FA2306002048584
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 Web Commerce Communications Limited / Client Care (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skecherespana.com>, <skechersphilipplne.com>, <skechers-polska.com>, and <skecherssouthafricaonllne.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 12, 2023; Forum received payment on June 12, 2023.
On June 12, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <skecherespana.com>, <skechersphilipplne.com>, <skechers-polska.com>, and <skecherssouthafricaonllne.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE 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 June 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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@skecherespana.com, postmaster@skechersphilipplne.com, postmaster@skechers-polska.com, postmaster@skecherssouthafricaonllne.com. Also on June 16, 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 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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 1: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II. Complainants argue that 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 relevant rules governing multiple complainants are UDRP Rule 3(a) and Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any 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.”
Previous panels have interpreted 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.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it treats them all as a single entity in this proceeding. Throughout the decision, the Complainants will be collectively referred to as “Complainant.”
PRELIMINARY ISSUE 2: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged 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. Paragraph 3(c) of 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.” Complainant contends the disputed domain names resolve to substantially similar websites with an identical format.
The Panel notes that the disputed domain names resolve to websites that contain the same layout and design elements, and are all offering, without authorization or approval, footwear bearing Complainant's SKECHERS trademark. The Panel thus finds that all of the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Throughout the decision, the Respondents will be collectively referred to as “Respondent.”
A. Complainant
i) Complainant is a multi-billion-dollar global leader in the lifestyle and performance footwear industry. Complainant has rights in the SKECHERS mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977, registered August 30, 1994). The disputed domain names are confusingly similar to Complainant’s SKECHERS mark because the domains include the SKECHERS mark or the nearly identical SKECHER mark in its entirety, adding hyphens, generic terms in different languages, country codes, and / or geographic designations, and the generic top-level domain (gTLD) ".com."
ii) Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the SKECHERS mark. Additionally, Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent uses them to pass off as Complainant while offering to sell suspected counterfeit products.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names to pass off as Complainant while offering to sell suspected counterfeit products. Respondent also had actual knowledge of Complainant’s rights in the SKECHERS mark prior to registering the disputed domain names based on the content of Respondent’s websites and the disputed domain names themselves.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. Complainant has established rights in the SKECHERS mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 1,851,977, registered August 30, 1994).
2. The disputed domain names <skecherespana.com>, <skechersphilipplne.com>, <skechers-polska.com>, and <skecherssouthafricaonllne.com> were registered on August 19, 2022; February 21, 2023; March 16, 2023; and March 20, 2023 respectively.
3. The disputed domain names’ resolving websites prominently display Complainant’s SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products.
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”).
Complainant asserts rights in the SKECHERS mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,851,977, registered August 30, 1994). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). Since Complainant provides evidence of trademark registrations with the USPTO, the Panel finds Complainant has established rights in the SKECHERS mark per Policy ¶ 4(a)(i).
Complainant argues the disputed domain names are confusingly similar to Complainant’s SKECHERS mark because the domains include the SKECHERS mark or the nearly identical SKECHER mark in its entirety, adding hyphens, generic terms in different languages, country codes, and/or geographic designations, and the generic top-level domain (gTLD) ".com." The Panel notes that the disputed domain names incorporate the SKECHERS mark or the nearly identical SKECHER mark in its entirety and add generic and/or geographic terms, i.e., the country “Espana” in Spanish which translates to the country Spain; the country name “Philippine” misspelled as “Philipplne”; the country Polska in Polish which translates to the country Poland; and the country South Africa and the generic term “online” misspelled as “onllne.” Adding a generic term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show 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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed to Respondent any rights in the SKECHERS mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain names. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the disputed domain names lists the registrants as “Web Commerce Communications Limited / Client Care,” and nothing in the record suggests that Respondent was authorized to use the SKECHERS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the disputed domain names to pass off as Complainant while offering to sell suspected counterfeit products. Passing off as a complainant while offering to sell counterfeit versions of the complainant’s products does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). Complainant highlights that Respondent’s websites prominently display the SKECHERS mark along with photographs of suspected counterfeit SKECHERS-branded products. Complainant argues that Respondent uses the SKECHERS trademark on its websites to sell suspected counterfeit Skechers products that compete directly with Complainant's business, and as a result, unsuspecting consumers may be duped into believing that the products displayed on the Respondents' websites are genuine Skechers products. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that the very nature of Respondent's registration of the disputed domain names evidences bad faith. 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.
The Panel finds that passing off as a complainant while offering to sell counterfeit versions of the complainant’s products can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (b)(iv). 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)”); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). The Panel recalls Complainant provides screenshots of the disputed domain names’ websites, which prominently display the SKECHERS trademark along with photographs of suspected counterfeit SKECHERS-branded products. Therefore, the Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant further contends that the fact that Respondent chose to register an exact reproduction of Complainant's SKECHERS mark in the gTLD ".com" and is using its websites to sell SKECHERS branded shoes indicates that Respondent had knowledge of Complainant and Complainant's business. The designation SKECHERS is unique and arbitrary such that it is unlikely Respondent devised the term on its own. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain names that Respondent had knowledge of Complainant’s rights in the SKECHERS mark before registering the disputed domain names which constitutes bad faith per Policy ¶ 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 <skecherespana.com>, <skechersphilipplne.com>, <skechers-polska.com>, and <skecherssouthafricaonllne.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: July 13, 2023
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