national arbitration forum

 

DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Internet World Wide c/o Geoff Shephard

Claim Number: FA1002001310393

 

PARTIES

Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A. Lerner, of Kleinberg & Lerner, LLP, California, USA.  Respondent is Internet World Wide c/o Geoff Shephard (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skecherswomensshoes.info>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

            Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2010.

 

On February 26, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skecherswomensshoes.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 March 3, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 23, 2010 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 postmaster@skecherswomensshoes.info by e-mail.

 

On March 16, 2010, the National Arbitration Forum granted the Parties’ request that the Administrative Proceeding be Stayed for a one-time period of forty-five days until April 26, 2010 pursuant to NAF Supplemental Rule 6(b)(i).  On April 26, 2010, the National Arbitration Forum lifted the Stay of Administrative Proceeding.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <skecherswomensshoes.info> domain name is confusingly similar to Complainant’s SKETCHERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <skecherswomensshoes.info> domain name.

 

3.      Respondent registered and used the <skecherswomensshoes.info> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Skechers U.S.A., Inc., manufactures and sells lifestyle footwear.  Complainant, Skechers U.S.A., Inc. II, is a wholly owned subsidiary of Sketchers U.S.A., Inc.  Hereinafter, these entities will be collectively referred to as Complainant.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SKETCHERS mark (e.g., Reg. No. 1,851,977 issued on August 30, 1994).

 

Respondent registered the disputed <skecherswomensshoes.info> domain name on November 12, 2009.  The disputed domain name resolves to a website purporting to sell Complainant’s products.  The website prominently displays Complainant’s SKETCHERS mark and photographs of goods resembling Complainant’s products.

 

DISCUSSION

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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

 

Complainant asserts rights in the SKETCHERS mark through its registration of this mark with the USPTO (e.g. Reg. No. 1,851,977 issued on August 30, 1994).The Panel finds this registration establishes Complainant’s rights in the SKETCHERS mark under Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Complainant argues Respondent’s disputed <skecherswomensshoes.info> domain name is confusingly similar to its SKETCHERS mark. Respondent incorporates Complainant’s mark in its entirety in the disputed domain name. Respondent then adds the generic terms “womens” and the descriptive term “shoes” to Complainant’s mark in the disputed domain name.  Finally, Respondent adds the generic top-level domain (“gTLD”) “.info” to Complainant’s mark in the disputed domain name.  The Panel finds these additions do not distinguish Respondent’s disputed domain name from Complainant’s mark.  Therefore, the Panel concludes Respondent’s disputed <skecherswomensshoes.info>  domain name is confusingly similar to its SKETCHERS mark pursuant to Policy ¶ 4(a)(i).  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant must first establish a prima facie case establishing that Respondent has no rights or legitimate interests in the <skecherswomensshoes.info> domain name under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  The Panel may presume Respondent has no rights or legitimate interests in the disputed domain name if Respondent fails to submit a response.  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”).  Although Respondent failed to respond, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant claims Respondent is not affiliated with Complainant in any way nor is Respondent authorized to use the SKETCHERS mark in a domain name.  Furthermore, the WHOIS information lists the registrant as “Shephard, Geoff.”  Therefore, the Panel finds Respondent is not commonly known by the <skecherswomensshoes.info> domain name pursuant to Policy ¶4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Respondent’s disputed <skecherswomensshoes.info> domain name resolves to Respondent’s website, which, in addition to featuring Complainant’s SKETCHERS mark, purports to sell Complainant’s products.  The Panel finds that Respondent’s use of the disputed domain names to sell counterfeit goods, and thereby profit from the use of Complainant’s mark, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

The Panel also finds that Respondent is attempting to pass itself off as Complainant for profit. Respondent uses Complainant’s mark and logo on Respondent’s website.  Respondent also offers similar goods that claim to be those made by Complainant.  The Panel finds that Respondent’s efforts to pass itself off as Complainant is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent uses the <skecherswomensshoes.info> domain name to divert Internet users seeking Complainant’s products to Respondent’s website.  The Panel finds Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to a website that offers goods that compete with Complainant’s products disrupts Complainant’s business and constitutes registration and use in bad faith under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).

 

In addition, Complainant argues that Respondent is using the disputed domain name to offer counterfeit versions of Complainant’s goods.  The Panel finds that Respondent’s activities in selling counterfeit goods provides further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).

 

Finally, Complainant asserts that Respondent is using the disputed domain names to pass itself off as being associated with Complainant by displaying Complainant’s SKETCHERS mark on the resolving website.  The Panel finds that this use also supports a finding of bad faith use and registration pursuant to Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <skecherswomensshoes.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Judge Harold Kalina (Ret.), Panelist

May 21, 2010

 

 

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