The Complainant is Skechers U.S.A., Inc. II, United States of America (“United States” or “U.S.”), represented by D Young & Co LLP, United Kingdom.
The Respondents are Domain Admin, Whoisprotection.cc, Malaysia, and Janina Blau, China. 2. The Domain Names and Registrars
The disputed domain name The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 13, 2021, the First Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name On July 8, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name The Center sent an email communication to the Complainant on July 13, 2021, providing the registrants and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 14, 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 Respondents of the Complaint, and the proceedings commenced on July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 11, 2021. The Center appointed Edoardo Fano as the sole panelist in this matter on August 17, 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. The Panel has not received any requests from the Complainant or the Respondents regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties. Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to the Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent. The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules. 4. Factual Background The Complainant is Skechers U.S.A., Inc. II, a U.S. company operating in the footwear industry and owning several trademark registrations for SKECHERS, among which the following ones: - United States Trademark Registration No. 1851977 for SKECHERS, registered on August 30, 1994; - Chinese Trademark Registration No. 696968 for SKECHERS, registered on July 7, 1994; - Malaysian Trademark Registration No. 9307499 for SKECHERS, registered on November 1, 1995; - European Union Trademark Registration No. 002992535 for SKECHERS, registered on September 29, 2004. The Complainant operates on the Internet at the main website “www.skechers.com”, as well as at other websites, including “www.skechers.se”, “www.skechers.cn” and “www.skechers.com.my”. The Complainant provided evidence in support of the above. According to the WhoIs records, the disputed domain name The Complainant states that the disputed domain names Moreover, the Complainant asserts that the Respondents have no rights or legitimate interests in respect of the disputed domain names since they have not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, they are not commonly known by the disputed domain names and they are not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Complainant submits that the Respondents have registered the disputed domain names in bad faith, since the Complainant’s trademark SKECHERS is distinctive and internationally known. Therefore, the Respondents targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the impersonation of the Complainant by the Respondents aimed to deceiving and attracting, for commercial gain, Internet users and to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement, qualifies as bad faith registration and use. B. Respondent The Respondents have made no reply to the Complainant’s contentions and are in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy,WIPO Case No. D2003-0109; SSL INTERNATIONAL PLC v. MARK FREEMAN,WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al.,WIPO Case No. D2000-0848; and Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A.,WIPO Case No. D2007-0288). 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. A. Consolidation of Multiple Respondents The Complaint and the amendment to the Complaint were filed against two registrants, and the Complainant has requested consolidation of multiple respondents. No objection to this request was made by the Respondents. Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “[w]here a complaint is filed against multiple respondents, panels 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”. The Panel may consider a range of factors to determine whether consolidation is appropriate, such as examining relevant registrant contact information, and any naming patterns in the disputed domain names, or other evidence of respondent affiliation that indicate common control of the disputed domain names. The Panel notes that the both disputed domain names redirect to the same website. The Panel finds that there is sufficient evidence that the disputed domain names are subject to common control, and that it would be procedurally efficient, fair and equitable to all Parties to accept the Complainant’s consolidation request. The Panel further notes that the Respondents did not object to the consolidation request. The Panel therefore accepts the Complainant’s consolidation request. B. Identical or Confusingly Similar The Panel finds that the Complainant is the owner of the trademark SKECHERS both by registration and acquired reputation and that the disputed domain names Regarding the addition of the word “butiker” (“shop” in English) and of the country name “sverige” (Sweden in English), the Panel notes that it is now well established that the addition of terms or letters to a domain name does not prevent a finding of confusing similarity between the disputed domain name and the trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti,WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709; and America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713). The addition of the descriptive word “butiker” and of the country name “sverige” does not therefore prevent the disputed domain names from being confusingly similar to the Complainant’s trademark SKECHERS. It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com” and “.top”, may be ignored when assessing the confusing similarity between a trademark and a domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain names are confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests The Respondents have failed to file a response in accordance with the Rules, paragraph 5. The Complainant in its Complaint, and as set out above, has established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names. It asserts that the Respondents, who are not currently associated with the Complainant in any way, is not using the disputed domain names for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services. Should the Complainant’s products sold on the website to which the disputed domain names are redirecting Internet users be genuine products, legitimately acquired by the Respondents, the question that would arise is whether the Respondents would therefore have a legitimate interest in using the disputed domain names that are confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion. According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the WIPO Overview 3.0, section 2.8.1: “(...) resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.” This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. However, the website, to which the disputed domain names resolves to, is not making any reference to the lack of relationship between the Respondents and the Complainant. Thus, the Panel is of the opinion that this is sufficient to support the allegation of lack of rights or legitimate interests of the Respondents in relation to these disputed domain names. Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant in relation to the Swedish market. See WIPO Overview 3.0., section 2.5.1. The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that “[…] for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [the Respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) that [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or (iii) that [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”. Regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark SKECHERS in the field of footwear is clearly established and the Panel finds that the Respondents likely knew of the Complainant and deliberately registered the disputed domain names, especially because on the website at the disputed domain names the Respondents are passing themself off as the Complainant. The Panel further notes that the disputed domain names are also used in bad faith since on the relevant website the Complainant’s trademark and logo are displayed, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain names’ source, sponsorship, affiliation or endorsement. The above suggests to the Panel that the Respondents intentionally registered and are using the disputed domain names in order to create confusion with the Complainant’s trademark and attract, for commercial gain, Internet users to its website in accordance with paragraph 4(b)(iv) of the Policy. The Panel finds that the Complainant has presented evidence to satisfy its burden of proof with respect to the issue of whether the Respondents have registered and are using the disputed domain names in bad faith. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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 names Edoardo Fano
Sole Panelist
Date: August 20, 2021
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