The Complainant is Skechers U.S.A., Inc. II, United States of America (“United States”), represented by D. Young & Co LLP, United Kingdom.
The Respondent is Domain Admin, Whoisprotection.cc, Malaysia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2021. On June 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 22, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2021. The Center appointed Alistair Payne as the sole panelist in this matter on August 3, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a wholly owned subsidiary of the Skechers group of companies (“Skechers Group”). The Skechers Group sells footwear products in more than 170 countries and territories around the world and in over 3,000 “Skechers” retail stores and other outlets and online through its website at “www.skechers.com” and “www.skechers.co.uk” as well as through websites at numerous other country code domain names that incorporate the SKECHERS mark. The Skechers Group was established in 1992 in Manhattan Beach, California. The Complainant owns a number of trade mark registrations internationally for its SKECHERS mark including, in particular, United States registration no. 1851977, registered on August 30, 1994, and United Kingdom trade mark no. 2143082, registered on February 20, 1998. The disputed domain name was registered on March 17, 2021 and resolves to a website that features the SKECHERS mark and logo that offers for sale footwear under the SKECHERS mark. 5. Parties’ Contentions A. Complainant The Complainant submits that it owns registered trade mark rights for its SKECHERS mark as noted above. It says that its mark is wholly incorporated into the disputed domain name and is therefore confusingly similar to it. According to the Complainant, the additional inclusion of the descriptive term “golf shoes” in the disputed domain name does not prevent a finding of confusing similarity. The Complainant submits that none of the circumstances which are specified in Paragraph 4(c) of the Policy as demonstrating the Respondent’s rights to, or legitimate interest in, the disputed domain name are present in this instance. The Complainant says that the Respondent is not a licensee, nor is it an authorised retailer, or distributor of SKECHERS products. In addition, says the Complainant, the Respondent is not otherwise authorised to use the name or the SKECHERS trade mark for any purpose and it has no connection or affiliation with the Complainant and is not commonly known by the disputed domain name. The Complainant therefore says that the Respondent has no right to use the SKECHERS trade mark in the disputed domain name and has not received any license or consent, express or implied, to do so and that there is no evidence that it is commonly known by the disputed domain name. All of this, says the Complainant, coupled with the fact that the Respondent is clearly using the disputed domain name to divert Internet users to its own website at which it sells counterfeit products for its’ own commercial gain, is not consistent with bona fide use of the disputed domain name such as might support a finding that the Respondent has a right or legitimate interest in the disputed domain name. As far as bad faith is concerned, the Complainant submits that the Respondent registered the disputed domain name on March 17, 2021, over 25 years after the Complainant registered and began using the SKECHERS mark. It further says that “skechers” is an arbitrary term which has no meaning outside its use as a trade mark which identifies the source of the Complainant’s footwear products. In addition, says the Complainant, its SKECHERS mark was very well known around the world, including in the United Kingdom, by the date of registration of the disputed domain name and the fact that the Respondent has used this mark on the website to which the disputed domain name resolves all points to the inference that the Respondent must have been aware of the Complainant’s mark when it registered the disputed domain name. The Complainant notes that the disputed domain name resolves to a website which purports to sell SKECHERS footwear, except that these products do not originate from the Complainant. It says that the Respondent uses the SKECHERS trade mark on its website to sell suspected counterfeit “Skechers” products that compete directly with the Skechers Group’s business. Furthermore, says the Complainant, the Respondent has used multiple logos and promotional images, the copyright in which is owned by or exclusively licensed to the Complainant, without authorisation. This, says the Complainant, is likely to have led unsuspecting consumers to have been duped into believing that the Respondent's website was an official “Skechers” website and the products displayed there were genuine SKECHERS products. By using the disputed domain name, submits the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name reverts by creating a likelihood of confusion with the Complainant’s famous SKECHERS trade mark as to the source, affiliation, or endorsement of the website and the products sold on the website. The Complainant notes that its representative’s attempt to purchase products from the website resulted in a payment failure in which its representative was asked to pay again and suggests in this regard that the website at the disputed domain name may be being used by the Respondent to obtain the card details of consumers or to overcharge consumers for the products being sold. Therefore, the Complainant submits that the disputed domain name is used in bad faith for the purpose of misleading and causing loss to consumers and potentially damaging the Complainant’s established goodwill. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has provided evidence that it owns various trade mark registrations for the SKECHERS mark, including United States registration no. 1851977, registered on August 30, 1994, and United Kingdom trade mark no. 2143082, registered on February 20, 1998. The disputed domain name wholly contains this mark and is therefore confusingly similar to it. The Panel finds that the inclusion of the term “golf shoes” and of the geographic abbreviation for the United Kingdom (“uk”) in the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark registrations for SKECHERS and that the Complaint succeeds under this element of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent is not a licensee, nor an authorised retailer, or distributor of SKECHERS products. It has also asserted that the Respondent is not otherwise authorised to use the name or the SKECHERS trade mark for any purpose and that the Respondent has no connection or affiliation with the Complainant and that the Respondent is not commonly known by the disputed domain name. Further and as discussed in Part C below, the Complainant has asserted that the Respondent is using the disputed domain name to divert Internet users to its own website at which it sells counterfeit products for its’ own commercial gain. The Panel agrees with the Complainant that the blatant unauthorised use of the disputed domain name itself, incorporating the Complainant’s very well reputed mark and also the use of the SKECHERS mark and logo on the website to which the disputed domain name resolves, in order to confuse Internet users into thinking that they are dealing with the Complainant, is not consistent with bona fide use of the disputed domain name. Overall, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or interests in the disputed domain name. As the Respondent has failed to respond, or to rebut the Complainant’s case, and also considering the Panel’s finding of the Respondent’s bad faith, as discussed under Part C below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complaint also succeeds under this element of the Policy. C. Registered and Used in Bad Faith The Respondent registered the disputed domain name on March 17, 2021, over 25 years after the Complainant registered and began using the SKECHERS mark. The Panel agrees with the Complainant that the term “skechers” in relation to footwear is an arbitrary and fanciful term that is very distinctive and is unlikely to have been created independently by the Respondent. The Panel also notes that by the date of registration of the disputed domain name, the SKECHERS mark was very well reputed internationally in relation to the Complainant group’s footwear products, including in the United Kingdom, being the geographic region at which the disputed domain name appears to be aimed. Most notably, however, the fact that the Respondent has used this mark including the logo format of the Complainant’s mark, on the website to which the disputed domain name resolves and in relation to footwear products that appear to be very similar to the Complainant’s, suggests that the Respondent must have been aware of the Complainant’s SKECHERS mark when it registered the disputed domain name. Under paragraph 4(b)(iv) of the Policy the use of the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a website or location or of a product or service on the website amounts to evidence of registration and use in bad faith. The disputed domain name resolves to a website which purports to sell SKECHERS footwear, except that the Complainant alleges that these products do not originate from it and are suspected counterfeit products. The unauthorised use by the Respondent of the logo format of the Complainant’s SKECHERS mark on the website to which the disputed domain name resolves and the fact that, at least to the uninitiated, the website appears to be selling the Skechers Group’s SKECHERS products, supports the inference that the Respondent has sought to use its website to masquerade as one of the Complainant’s official websites, or at the least as an authorised reseller of SKECHERS products when this is not the case. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name reverts by creating a likelihood of confusion with the Complainant’s SKECHERS trade mark as to the source, affiliation, or endorsement of the website and the products sold on it in terms of paragraph 4(b)(iv) of the Policy. The evidence of payment failure and request for further details when the Complainant’s representatives attempted to make a purchase on the website at the disputed domain name, may or may not be indicative of a fraudulent intention by the Respondent to gather potential customer’s banking information. Without more the Panel declines to draw any inferences on this issue, but in view of the Panel’s findings above, this is of no moment in any event. Accordingly, the Panel finds that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint therefore also succeeds under this element of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Alistair Payne
Sole Panelist
Date: August 17, 2021
Full & Egal Universal Law Academy