Skechers U.S.A., Inc. and Skechers U.S.A., Inc. Ii v David J. Perkins

WIPO Case No. DPH2024-0005

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. David J. Perkins,
Worldwide Domains

Case No. DPH2024-0005

1. The Parties

The Complainants are Skechers U.S.A., Inc., United States of America (“United States”), and Skechers

U.S.A., Inc. II, United States of America, represented by Kleinberg & Lerner, LLP, United States of America.

The Respondent is David J. Perkins, Worldwide Domains, United States of America.

2. The Domain Name and Registrar

The disputed domain name <skechers.ph> is registered with DotPH (the “DotPH Registry”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16,

2024. On November 18, 2024, the Center transmitted by email to the DotPH Registry a request for registrar Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 23, 2024. The hardcopies of the Complaint and the amended Complaint were received on November 28, 2025, by the Center.

verification in connection with the disputed domain name. On November 19, 2024, the DotPH Registry
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 (Unknown; Privacy Protected by
Registry) and contact information in the Complaint. The Center sent an email communication to the

The Center verified that the Complaint together with the amended Complaint satisfied the formal

requirements of the .PH Uniform Domain Name Dispute Resolution Policy (“phDRP” or the “Policy”), the

Rules for .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental

Rules (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the paragraph 5(a), the due date for Response was December 19, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 20, 2024.

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The Center appointed Angela Fox as the sole panelist in this matter on January 6, 2025. 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 First Complainant, Skechers U.S.A., Inc. II, is a wholly owned subsidiary of the Second Complainant, Skechers U.S.A., Inc. Skechers U.S.A., Inc. II holds trademark registrations on behalf of Skechers U.S.A.,

Inc. They are referred to collectively in this decision as “the Complainant”.

The Complainant manufactures and sells lifestyle and performance footwear. It is based in the United States but trades worldwide. It sells its footwear products under and by reference to the trademark SKECHERS,

which appears on the Complainant’s products, packaging and on its marketing and promotional materials.

The Complainant’s SKECHERS footwear products are sold in more than 180 countries and territories around

the world in over 5,300 Skechers stores and online through its website, “ which has

been registered and in use since as early as 1993. The Complainant’s products are also available through

department stores, specialty stores, athletic specialty shoe stores, independent retailers, and Internet

retailers worldwide. The Complainant’s business under the SKECHERS trademark is worth billions of dollars

worldwide.

The Complainant states that it owns more than 300 registrations for the SKECHERS trademark worldwide, details of which were annexed to the Complaint. These include the following registrations, for which copies of the registration and most recent renewal certificates were also annexed to the Complaint:

- United States trademark registration no. 1851977 for SKECHERS in Class 25, registered on August

30, 1994, and

-	Philippines trademark registration no. 63364 for SKECHERS in Class 25, registered on August 13,
1996.

The disputed domain name was registered on May 14, 2022. It is in use for a page hosting pay-per-click

(“PPC”) links to third-party websites offering footwear for sale under various brands in competition with the

Complainant. The Complainant also annexed a screenshot showing that the disputed domain name is being offered for sale for USD 6,000.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to its registered

trademark SKECHERS, because it incorporates the Complainant’s trademark in its entirety and only adds

the country code Top-Level Domain (“ccTLD”) identifier “.ph”.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed

domain name. The Respondent is not a licensee, authorized retailer, or distributor of the Complainant’s

products, nor is the Respondent otherwise authorized to use the SKECHERS trademark for any purpose. name. The Complainant submits that the use that the Respondent is making of the disputed domain name unfairly capitalizes on and takes advantage of the SKECHERS trademark in order to lead Internet users to websites offering competing footwear and does not give rise to a right or legitimate interest in the disputed domain name.

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Finally, the Complainant contends that the disputed domain name was registered and has been used in bad faith. By using the domain name in connection with a PPC service, the Respondent has intentionally attempted to attract for commercial gain, Internet users to third-party online retail locations by creating a

likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the Respondent’s site and the other retail sites advertised on it. The Complainant also argues that the

listing of the disputed domain for sale “for valuable consideration in excess of the respondent’s documented

out-of-pocket costs” is evidence of registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional

circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers

appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between

the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.1

In this case, the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(b) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

1In view of the fact that the phDRP is to an extent based on the Uniform Domain Name Dispute Resolution Policy (“UDRP”), it is well

established that panels may rely on jurisprudence under the UDRP, and therefore the WIPO Overview 3.0.

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Although the overall burden of proof in phDRP proceedings is on the complainant, panels have recognized that proving that a respondent lacks rights or legitimate interests in a domain name may result in the difficult

task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section

2.1.

In this case, the Respondent is not a licensee, authorized retailer, or distributor of the Complainant, nor is the

Respondent authorized in any way to use the Complainant’s trademark for any purpose. There is nothing to

suggest that the Respondent is commonly known by the disputed domain name. The Respondent has made no effort to respond to the Complaint and make out any basis for a right or legitimate interest in the disputed domain name.

As noted at section 2.9, WIPO Overview 3.0, “panels have found that the use of a domain name to host a

parked page comprising PPC links does not represent a bona fide offering where such links compete with or

capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” The

PPC use that the Respondent has been making of the disputed domain name falls within this category, as it

is using the Complainant’s trademark to attract Internet users and then lead them to websites offering

footwear that competes with the Complainant’s brand. The Respondent is thereby capitalizing on the

reputation and goodwill of the Complainant’s SKECHERS trademark in order to lead consumers to other

brands. Consequently, the Respondent’s use is not capable of giving rise to rights or legitimate interests in

the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(a) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Under paragraph 4(a)(iv) of the Policy, such circumstances include that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.

In the present case, the Panel notes that the Respondent has used the disputed domain name in connection

with a PPC website which displays the Complainant’s trademark in links which then take the user to further

links to third-party websites offering for sale third-party branded footwear, which is in direct competition with

the Complainant’s footwear. There is no doubt that such use creates a likelihood of confusion with the

Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The Panel finds that the disputed domain name was registered and has been used in bad faith under 4(a)(iv) of the Policy.

In addition, under paragraph 4(a)(i) of the Policy, a panel may find both registration and use of a domain name in bad faith where there are circumstances indicating that it was registered or acquired 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 that complainant, for valuable consideration

in excess of the respondent’s documented out-of-pocket costs directly related to the domain name.

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The Complainant has shown evidence that the disputed domain name is being offered for sale at a cost of registration of the disputed domain name by the Respondent, absent evidence from the Respondent to the

contrary. The disputed domain name, which consists solely of the Complainant’s trademark and the ccTLD

identifier “.ph”, is likely to be of interest principally to the Complainant, whose footwear is sold worldwide

including in the Philippines, or to a competitor of the Complainant. The Panel finds that the disputed domain

name was registered and has been used in bad faith under 4(a)(i) of the Policy.

The Complainant has therefore established the third element of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(h) of the Policy and 15 of the Rules, the

Panel orders that the disputed domain name <skechers.ph> be transferred to the Complainant.

/Angela Fox/

Angela Fox

Sole Panelist
Date: January 31, 2025