ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Skechers U.S.A., Inc. v. Web Commerce Communications Limited, Client Care Case No. D2022-3264 1. The Parties The Complainant is Skechers U.S.A., Inc., United States of America ("US"), represented by D Young & Co LLP, United Kingdom. The Respondent is Web Commerce Communications Limited, Client Care, Malaysia. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2022. On September 2, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2022, 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 September 7, 2022 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 amendment to the Complaint on September 8, 2022. The Center verified that the Complaint together with the amendment to the 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 September 9, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 6, 2022. page 2 The Center appointed Andrea Mondini as the sole panelist in this matter on October 6, 2022. 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 member of the Skechers group of companies, a global leader in the lifestyle and performance footwear industry. Skechers footwear products are sold in more than 170 countries and territories around the world including Norway, in over 3,000 Skechers retail stores and online through its website "www.skechers.com" and specifically for the Norwegian market through "www.skechers.no". The Complainant owns numerous trademarks with the element SKECHER, inter alia, the US Trademark No. 1851977 registered on August 30, 1994 in international class 25 and the European Union Trademark No. 002992535 registered on April 29, 2004 in international class 18. The disputed domain name was registered on January 25, 2022. The disputed domain name resolves to a website which offers for sale footwear under the SKECHERS mark. 5. Parties' Contentions A. Complainant The Complainant contends as follows: The disputed domain name is confusingly similar to the SKECHER trademark in which the Complainant has rights, because it incorporates this trademark in its entirety, and the addition of the word "norge" (which means Norway) is not sufficient to avoid confusing similarity. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The mark SKECHER is associated with the Complainant, since this trademark has been extensively used for more than 25 years to identify the Complainant and its products. The Respondent is not commonly known by the domain name, has not been authorized by the Complainant to use this trademark and has no connection or affiliation with the Complainant. The Disputed Domain Name resolves to a website which offers for sale footwear under the SKECHERS mark. The Respondent uses the SKECHERS Trademark on its website to sell suspected counterfeit Skechers products. The Complainant suspects that these are counterfeit products on the basis that shoes offered on the Respondent's website are sold at almost half the price than those sold through the Complaint's official Norwegian Skechers website. Moreover, as a result of the Respondent's use of the Complainant's logos, unsuspecting consumers may have been duped into believing that the Respondent's website was an official website of the Complainant. The disputed domain name was registered and is being used in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well known trademark SKECHER at the time it registered the disputed domain name, and because the website to which the disputed domain name resolves offers suspected counterfeit products under the SKECHER trademark. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant owns trademark registrations for its SKECHER trademark. The Panel notes that the disputed domain name incorporates the SKECHER trademark in its entirety. The addition of the word "norge" (meaning Norway) does not prevent a finding of confusing similarity under Policy, paragraph 4(a)(i). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8. For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's mark SKECHER. The first element of paragraph 4(a) of the Policy has been met. B. Rights or Legitimate Interests The Complainant states it has not authorized the Respondent to use the trademark SKECHER and that it has no connection or affiliation with the Respondent. The Panel does not see any contrary evidence from the record. In the view of the Panel, based on the facts and contentions set out above, the Complainant has succeeded in raising a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. For its part, the Respondent failed to provide any explanations as to any rights or legitimate interests. Therefore, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. The second element of paragraph 4(a) of the Policy has been met. C. Registered and Used in Bad Faith The Complainant has shown to the satisfaction of the Panel that its SKECHER trademark is well-known. In the view of the Panel, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant's well-known trademark, particularly considering that the website posted by the Respondent under the disputed domain name offers products under the SKECHER trademark. In the circumstances of this case, this is evidence of registration in bad faith. The Complainant alleges that the Respondent uses the SKECHERS trademark on its website to sell suspected counterfeit Skechers products. The Complainant suspects that these are counterfeit products on the basis that shoes offered on the Respondent's website are sold as almost half the price than those sold through the Complaint's official Norwegian Skechers website. The Respondent has not denied this page 4 allegation. A previous panel deciding a comparable dispute between the same parties has previously found that it was reasonable to conclude that products offered by the Respondent under a similar domain name for almost half the price of original products were counterfeit products. See Skechers U.S.A., Inc. II v. Client Care, Web Commerce Communications Limited, WIPO Case No. D2021-4182. For the same reasons, and further considering the Respondent's failure to deny the Claimant's allegations, also this Panel believes that it is reasonable to conclude that also in the present dispute the goods offered by the Respondent are counterfeit. Under the circumstances of this case, the Panel thus finds that the disputed domain name was registered and is being used in bad faith. The third element of paragraph 4(a) of the Policy has been met. 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 be transferred to the Complainant. /Andrea Mondini/ Andrea Mondini Sole Panelist Date: October 20, 2022
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