Skechers U.S.A., INC. II v. David Bergstein c/o Graybox, LLC
Claim Number: FA0110000100309
Complainant is Skechers U.S.A., INC. II, Manhattan Beach, CA (“Complainant”) represented by Marshall A. Lerner, of Kleinberg & Lerner LLP. Respondent is David Bergstein c/o Graybox, LLC, Los Angeles, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sketchers.tv>, registered with Dot.tv.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 4, 2001; the Forum received a hard copy of the Complaint on October 5, 2001.
On October 8, 2001, Dot.tv confirmed by e-mail to the Forum that the domain name <sketchers.tv> is registered with Dot.tv and that Respondent is the current registrant of the name. Dot.tv has verified that Respondent is bound by the Dot.tv registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 29, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The domain name <sketchers.tv> is confusingly similar in sight, sound and meaning to the registered SKECHERS trademarks.
2. Respondent has no right nor legitimate interest respecting the domain name <sketchers.tv> because Respondent made no prior or current bona fide commercial or legitimate non-commercial use of the domain name <sketchers.tv> and was never commonly known by that domain name.
3. Respondent registered and used the domain name <sketchers.tv> in bad faith.
No Response was received.
Complainant is a publicly traded corporation whose business includes the design, development, manufacturing, sale and distribution of high quality footwear throughout the United States and the world. Complainant has developed a strong brand identity for the SKECHERS line of footwear associated with Complainant and the tremendous goodwill associated with Complainant’s trademarks and domain name. From 1992 to the present, Complainant has spent millions of dollars in marketing and advertising, all directly related to the SKECHERS brand of footwear and the goodwill associated with the SKECHERS family of trademarks and the <skechers.com> domain name. Between 1996 and 2000, Complainant’s annual net sales of its footwear to retailers throughout the world grew from 115 million to 675 million dollars.
Complainant federally registered the SKECHERS mark with the United States Patent and Trademark Office on August 30, 1994.
Since registering the disputed domain name, Respondent has made no use of <sketchers.tv>, nor of any corresponding name, in connection with any bona fide offering of goods or services.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The domain name <sketchers.tv> merely adds the letter “t” to Complainant’s SKECHERS mark. Such an intentional misspelling of a well-known mark satisfies the confusingly similar requirement of Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake Patrol, FA 95822 (Nat. Arb. Forum Nov. 20, 2000) (finding confusing similarity where the domain names, such as <hewittpackard.com>, are simply misspellings of Complainant's mark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusing similar to the Complainant's mark "State Farm"); see also Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding confusing similarity where the domain names, such as <britannca.com>, are simply misspellings of Complainant's mark); see also Air Canada v. Zuccarini, FA 97162 (Nat. Arb. Forum June 6, 2001) (finding confusing similarity where the domain name, <aircanda.com>, was an apparent misspelling of the famous airline's name).
Additionally, the “.tv” portion of the domain name is trivial in the comparison between the domain name and Complainant’s mark. E.g., Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (finding that the domain name <clairol.tv> is identical to Complainant’s CLAIROL marks).
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has no affiliation or relationship with Complainant and, therefore, has no legitimate reason for using Complainant's mark, or a misspelling thereof, as its domain name. See American Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).
In addition, Respondent has made no use of the domain name to date. This is further evidence that Respondent has no rights or legitimate interest in the domain name. See Valigene Corp. v. MIC, FA 94860 (Nat. Arb. Forum Aug. 1, 2000) (finding no rights or legitimate interest in the non-use of a domain name that was a misspelling of a famous mark).
Even if Respondent did begin using the <sketchers.tv> domain name, however, the use could not be legitimate. First, Respondent does not conduct any bona fide business under the name SKETCHERS. See Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a misspelled domain name because Respondent did not provide any bona fide products in connection with the domain name).
Lastly, the use of a domain name that is a misspelling of a famous mark cannot be a legitimate noncommercial or fair use of the famous mark. See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).
In sum, it should be concluded that Respondent does not have any rights or legitimate interests with respect to the disputed domain name.
Registration and Use in Bad Faith
Respondent’s use of this domain name, which capitalizes on a common typo of Complainant’s famous mark, is called "typosquatting." This practice of "typosquatting" has been recognized as a bad faith use of a domain name under the UDRP. See, e.g., AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <www.alavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co., Inc. and Dow Jones, L.P. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
Further, Respondent’s use of a domain name confusingly similar to Complainant’s SKECHERS mark is evidence of bad faith. See Am. Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that <gameicq.com> and <gameicq.net> are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it).
Lastly, when coupled with the Complainant’s well-established SKECHERS mark, Respondent's passive holding of the domain name may be interpreted as bad faith and, therefore, satisfies Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Therefore, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having fulfilled all three requirements of paragraph 4(a) of the Policy, it is the decision of the Panel that the relief sought be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain name, <sketchers.tv>, be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 19, 2001
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