WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Skechers U.S.A., Inc. II v. Client Care, Web Commerce Communications Limited

Case No. D2021-4182

1. The Parties

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 Client Care, Web Commerce Communications Limited, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <skecherssandalsuk.com> 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 December 13, 2021. On December 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 17, 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 December 20, 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 December 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2022.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on January 20, 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 known for footwear. The Skechers group was established in 1992 and sells its products internationally. The Complainant has registered the trademark SKECHERS in many jurisdictions. For example, the Complainant owns the following registrations:

- United States trademark registration no. 1851977 for the trademark SKECHERS, registered on August 30, 1994;
- United Kingdom trademark registration no. UK00002143082 for the trademark SKECHERS, registered on February 20, 1998; and
- European Union trademark registration no. 002992535 for the trademark SKECHERS, registered on September 29, 2004.

The disputed domain name was registered on June 25, 2021 and resolves to a website, which seems to offer counterfeits of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant’s trademark SKECHERS is widely promoted internationally and endorsed by celebrities. The Complainant’s trademark enjoys a considerable goodwill with respect to footwear. The Complainant’s trademark is well-known as established by UDRP panels. The Complainant owns a number of domain names using its trademark SKECHERS. The disputed domain name includes the Complainant’s trademark SKECHERS in its entirety. The geographical indication “uk” and the descriptive term sandalsdo not eliminate confusing similarity as the trademark remains clearly recognizable. The generic Top-Level Domain (“gTLD”) “.com” should generally be ignored when assessing confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered more than 25 years after the Complainant had registered and started the use of its trademark. The Complainant’s trademark is an arbitrary term. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark. There is no evidence that the Respondent is commonly known by the disputed domain name. The use of the disputed domain name cannot be considered a bona fide offering of goods or services. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The disputed domain name is used to suggest affiliation with the Complainant for commercial gain. The Respondent sells suspected counterfeit products of the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The disputed domain name contains the well-known trademark of the Complainant in order to capitalize on consumer recognition of the Complainant’s trademark for the purpose of selling counterfeit products by creating an impression of affiliation. The Respondent must have been aware of the Complainant’s trademark. The Complainant’s registration of its trademark dates back to 1994 while the disputed domain name was registered in 2021. The Complainant’s trademark is unique and arbitrary. The Respondent is attempting to attract Internet users to its website for commercial gain by creating confusion with the Complainant and its trademark.

B. Respondent

The Respondent did not submit a reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark SKECHERS. The Panel is satisfied that the Complainant has established its ownership of the trademark SKECHERS.

The disputed domain name incorporates the Complainant’s trademark SKECHERS in its entirety. It is established by prior UDRP panels that when a domain name incorporates a complainant’s registered trademark, such incorporation is sufficient to establish identity or confusing similarity for the purposes of the Policy even if other words are added as part of the disputed domain name. E.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”).

The letters “uk” and the term “sandals” do not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademark. The gTLD “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not affiliated with nor authorized by the Complainant to use its trademark.

The Complainant further contends that the disputed domain name is being used to sell purportedly counterfeit products. The Complainant has not provided any evidence that the products being offered are indeed counterfeit. The Panel cannot conclude that the products are counterfeit without there being some showing that they in fact are counterfeit. Prior UDRP panels have explained that “a complainant must allege facts sufficient to establish each of the three elements of the Policy, and must ensure that those facts are well pleaded. Conclusory allegations are unlikely to be sufficient; rather, the allegations should be specific and, if not burdensome, supported with appropriate evidence”. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Chunhai Zhang, WIPO Case No. D2012-0136. The Panel notes that a simple comparison of prices should be sufficient to assess whether the products being offered through the disputed domain name are counterfeit. The Panel took as an example, women sneakers, and compared the prices. On the Complainant’s website for the UK market, the prices for such products range between GBP 75 and GBP 105. Similar products are offered on the website to which the disputed domain resolves for prices ranging between GBP 36 and GBP 51. This means that the products are sold for almost half the price of the products offered on the Complainant’s website. Therefore, it is only reasonable to conclude that these are counterfeit products. As a result, the Panel finds that the website to which the disputed domain name resolves offers counterfeits of the Complainant’s products.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

There are many indications that the disputed domain name is registered and is being used in bad faith. The Complainant’s trademark is well-known. The nature of the disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademark in full. The use of the geographical indication “uk” reinforces the impression that the disputed domain name is the Complainant’s website for the United Kingdom market. The use of the term “sandals” reinforces the impression that the disputed domain name belongs to the Complainant as it refers to the field of business of the Complainant. The disputed domain name resolves to a website, which offers counterfeits of the Complainant’s products. As such, the disputed domain name suggests affiliation with the Complainant in order to attract consumers and offer counterfeit products. It has been found by prior UDRP panels that the use of a website for offering counterfeit goods is bad faith use: “[t]he Panel accepts that the Respondent’s website is in English and targets the US public with prices in dollars and that The Domain Name is used in bad faith because the website offers counterfeit goods for sale thereby competing with Complainant and disrupting Complainant’s business.” (See Mattel, Inc. v. Magic 8 ball factory, WIPO Case No. D2013-0058)

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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, <skecherssandalsuk.com>, be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: January 24, 2022