Skechers
Claim Number: FA1003001311146
PARTIES
Complainant is Skechers U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bestshapeupshoes.com>, registered
with Wild
West Domains, 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.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 2, 2010.
On March 3, 2010, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <bestshapeupshoes.com> domain name is
registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 8, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of March 29, 2010 by which Respondent could file
a Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@bestshapeupshoes.com. Also on March
8, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response was transmitted to
Respondent via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 29, 2010.
On April 6, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant
Skechers is a worldwide leader in the lifestyle footwear. Skechers was founded
in 1992 and became world famous in a matter of years. Skechers is publicly traded
on the New York Stock Exchange (SKX).
Skechers'
SHAPE‑UPS shoes have become famous and well known in the time since their
inception. SHAPE‑UPS are recognized as originating from Skechers. The marks
SHAPE‑UPS and SKECHERS enjoy vast international protection. Not only does
it enjoy international protection, the mark is well known and distinctive of
the high-quality, stylish footwear all over the world. The domain name <bestshapeupshoes.com> is
virtually identical and confusingly similar to Complainant's mark SHAPE-UPS.
The only difference between the domain and the mark is the addition of the
words "best" prior to the mark and "shoes" after the mark.
The addition of the words "best" and "shoes" does not
change, alter or clarify the mark, but rather it confuses people. Consumers
will be confused in thinking that this website is an official website for
Complainants since it bears Complainants' mark and the terms "best"
and "shoes." The term "shoes" is descriptive of
Complainant's goods for which it is known for and for Complainant's registered
trademarks. Furthermore, Consumers will be led to believe that it is the
official website of Complainant due to the official sounding domain name.
Consumers will be led to believe that this is an official website of
Complainants that deals with Skechers' SHAPE-UPS shoes.
Respondent
has no rights or legitimate interests in respect of the domain name. Respondent
is not a retailer, distributor or authorized to sell Skechers' products.
Respondent is not authorized to use the name or marks SHAPE-UPS and SKECHERS.
Respondent's webpage at <bestshapeupshoes.com>
attempts to pass itself off as a blog. However, the webpage simply takes user
reviews from Amazon.com regarding Skechers' goods and then links them back to
Amazon.com so that the Respondent may receive click-through/affiliate credits.
The webpage simply lifts RSS feeds from Amazon.com and attempts to pass them
off as their own. Furthermore, Respondent's webpage is riddled with Google Ads
and Amazon.com Ad banners. Respondent further is using copyrighted materials on
its webpage in an attempt to confuse and mislead consumers that the website is
affiliated with Skechers. On the top right hand portion of Respondent's
website, there is a video of the "Shape-Ups Instructional Video." That video is the subject of United States
Copyright Registration.
Respondent is using the domains to earn money based off of referrals. Respondent
is not using the domain in connection with a bona fide offering of goods or services.
In fact, at the time of this Complaint, there were no products listed in Respondent's
site that are for sale from Respondent, but rather the products listed are linked
to Amazon.com. Furthermore, Skechers
The domain was registered and is being used in bad faith. Not only does
Respondent falsely allege a connection with Skechers, but Respondent also
attempts to playoff of the worldwide fame of the Skechers marks in order to
confuse consumers in clicking on Respondent's links or visiting Respondent's
domains. Furthermore, Respondent is using Skechers' copyrighted materials in an
attempt to confuse consumers. As a result, Respondent gains monetary
compensation through click-through ad referrals by confusing consumers. Respondent
has registered the domain name in order to prevent the owner of the trademark
from reflecting the mark in a corresponding domain name.
B. Respondent
Respondent only contends that the website is being moved to another
location.
FINDINGS
Complainant has trademark rights in the mark
SHAPE-UPS which predates Respondent’s registration of <bestshapeupshoes.com>.
A website that is referenced by the disputed
domain name contains material which appears to be proprietary to the
Complainant and links to sellers of Complainant’s trademarked products.
Respondent’s website contains unauthorized
copyrighted material owned by the Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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.
Complainant provides evidence of its registering the SHAPE-UPS mark with
the United States Patent and Trademark Office on December 29, 2009 (Reg. No.
3,732,331 filed November 11, 2008). Although
the registration issued a few days subsequent to the domain name registration,
the Panel finds that the trademark registration is sufficient to show Complainant
having rights in the at-issue mark dating back to the filing of its
application. Complainant’s rights in the at-issue mark thus predate the
registration of the disputed domain name. Complaint thereby establish rights in SHAPE-UPS pursuant
to 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 Phoenix Mortgage
Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of
Complainant's federal rights is . . . the filing date of its issued
registration. Although it might be possible to establish rights prior to that
date based on use, Complainant has submitted insufficient evidence to prove
common law rights before the filing date of its federal registration.”); see
also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12,
2002) (holding that the effective date of Complainant’s trademark rights date
back to the application’s filing date).
Respondent’s <bestshapeupshoes.com> domain name is confusingly similar to Complainant’s
SHAPE-UPS mark under Policy ¶ 4(a)(i). The disputed domain name contains
Complainant’s entire SHAPE-UPS mark only without the hyphen (the “s” in “shoes”
serves to complete the mark). The domain name is also differentiated from Complainant’s
mark by the addition of the generic term “best,” the descriptive term “shoes,”
and the generic top-level domain “.com.” These alterations are colorably insufficient
to adequately distinguish the mark and disputed domain name such that they would
not be considered confusingly similar under Policy ¶4(a)(i). Respondent offers no basis for finding
otherwise. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum
June 7, 2004) (finding the respondent’s <amextravel.com> domain name
confusingly similar to Complainant’s AMEX mark because the “mere addition of a
generic or descriptive word to a registered mark does not negate” a finding of
confusing similarity under Policy ¶ 4(a)(i)); see
also
Therefore for the reasons discussed above Complainant establishes that
pursuant to Policy ¶4(a)(i) it has rights in a mark
which is confusingly similar to the disputed domain name.
Complainant must
first make out a prima facie case showing that Respondent lacks rights
and legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. The threshold for such showing is
low. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Once a prima facie case is established, the burden then effectively
shifts to Respondent who must demonstrate that it nevertheless has rights and
legitimate interests in the at-issue domain name.
Complainant asserts that the Respondent is not known by the disputed domain name. WHOIS information shows “Alicia Lyttle” as the domain name’s registrant and corroborates Complainant’s claim. Complainant declares that it has not authorized Respondent to use its mark or sell its products and there is no evidence to the contrary. Therefore, since there are no controverting claims by the Respondent, or evidence proffered that shows Respondent’s rights and legitimate interests in the domain name pursuant to Policy ¶4(c) or otherwise, the Panel concludes that Complainant has carried its burden under paragraph 4(a)(ii) and that the Respondent lacks rights and interests in respect of the domain name.
Complainant claims and Respondent does not
refute that Respondent is enriched by click‑through traffic originating
on Respondent’s website via her affiliation with certain linked sellers of
Complainant’s products. Respondent also does not deny Complainant’s contention
that Respondent is using the disputed domain name in an attempt to playoff the
worldwide fame of Complainant’s Skechers mark to confuse consumers in clicking
on such links on Respondent’s website.
Consistent with Complainant’s claims, the
record shows that the disputed domain name resolves to a website which ultimately
offers Complainant’s products for sale via linked third party merchants. The
confusing similarity between the domain name and Complainant’s mark, the copyright
infringing material present as well as the related devices on Respondent’s
website, are, at least in concert, likely to confuse Internet users into
believing that Respondent’s website is sponsored by the Complainant, when it is
not. Since there is no alternative explanation offered in the record for Respondent
registering the domain name and there is a plausible inference that the reason
for registering the disputed domain name was to trade on Complainant’s mark,
the Panel concludes that the domain name was registered for such purpose. The
use of the domain name in such manner shows bad faith registration and use under
Policy ¶4(b)(iv).
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 <bestshapeupshoes.com> domain name be
TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 20, 2010
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