Skechers
Claim Number: FA1003001313722
Complainant is Skechers U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <womensskechers.com>, registered with Xin Net Technology Corporation.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2010. The Complaint was submitted in both the Chinese and English languages.
On March 17, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <womensskechers.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 23, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of April 12, 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@womenssckechers.com. Also on March 23, 2010, the Chinese language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <womensskechers.com> domain name is confusingly similar to Complainant’s SKECHERS mark.
2. Respondent does not have any rights or legitimate interests in the <womensskechers.com> domain name.
3. Respondent registered and used the <womensskechers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers
Respondent, huang jiao c/o jiahuang, registered the <womensskechers.com> domain name on January 25, 2010. Respondent’s disputed domain name resolves to a website that displays Complainant’s logo prominently, and advertises Complainant’s footwear products for sale.
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.
The Panel finds that Complainant has established rights in its SKECHERS mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g. Reg. No. 1,851,977 issued on August 30, 1994) and the SIPO (e.g. Reg. No. 696,968 issued on July 7, 1994). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes 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).
Respondent’s <womensskechers.com>
domain name contains Complainant’s mark in its entirety while adding the
generic term “womens” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed
domain name containing Complainant’s entire mark with the addition of a generic
term, and the gTLD “.com” is confusingly similar to Complainant’s mark under
Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co.
(
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <womensskechers.com> domain name. Complainant is required to make a prima facie case in support of these allegations. After Complainant has produced a prima facie case the burden of proof shifts to Respondent to show why it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant asserts that it has not granted Respondent
permission to use its SKECHERS mark, and that Respondent is not commonly known
by the disputed domain name. The WHOIS
information for the <womensskechers.com>
domain name identifies, “huang jiao c/o jiaohuang” as the registrant of the
domain name. The Panel finds that,
absent evidence from Respondent indicating otherwise, that Respondent lacks
rights and legitimate interests in the <womensskechers.com>
domain name under 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
Respondent’s <womensskechers.com> domain name resolves to a website that displays Complainant’s footwear products for sale, and also displays Complainant’s logo throughout the site. Complainant asserts that it has not granted Respondent permission to sell its goods, nor has Complainant received an application from Respondent indicating it desires to be a licensed product retailer. Therefore, the Panel finds that Respondent’s use of the confusingly similar <womensskechers.com> domain name to sell Complainant’s goods, or counterfeit goods under Complainant’s mark without authorization is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); 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 finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the confusingly similar disputed domain name to redirect Internet users seeking Complainant’s products to Respondent’s website creates a disruption in Complainant’s business. Complainant contends that Respondent’s unauthorized sale of Complainant’s goods actively removes business from Complainant. The Panel finds that Respondent’s use of the <womensskechers.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Complainant further argues that Respondent’s use of the
disputed domain name to intentionally attract Internet users to its website for
commercial gain is further evidence of bad faith registration and use. The Panel finds that Respondent’s use of the <womensskechers.com> domain name to
sell Complainant’s products where it is not authorized to do so is further
evidence of Respondent’s bad faith registration and use of the disputed domain
name under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667
(Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶
4(b)(iv) by creating a likelihood of confusion with the complainant's mark by
using a domain name identical to the complainant’s mark to sell the
complainant’s products); 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.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <womensskechers.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 23, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum