national arbitration forum

 

DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Huang Jiao c/o Jiaohuang

Claim Number: FA1003001315983

 

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 Huang Jiao c/o Jiaohuang (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <skechersoutlets.com> and <skechershoe.com>, registered with Xin Net Technology Corporation.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 26, 2010. The Complaint was submitted in both Chinese and English.

 

On March 29, 2010,  Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <skechersoutlets.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 31, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <skechershoe.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 April 1, 2010, the Forum served the Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of April 21, 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@skechersoutlets.com and postmaster@skechershoe.com.  Also on April 1, 2010, the Chinese 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 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <skechersoutlets.com> and <skechershoe.com> domain names are confusingly similar to Complainant’s SKECHERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <skechersoutlets.com> and <skechershoe.com> domain names.

 

3.      Respondent registered and used the <skechersoutlets.com> and <skechershoe.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, has registered its SKECHERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,851,977 issued August 30, 1994). Complainant asserts to having been using the mark in connection with lifestyle footwear and related products such as gym bags, watches, purses, wallets, and tote bags.

 

Respondent, Huang Jiao c/o Jiaohuang, registered the <skechersoutlets.com> and <skechershoe.com> domain names on January 25, 2010. The disputed domain names each resolve to a website featuring products allegedly from Complainant. Respondent also uses the disputed domain names to engage in phishing by gaining fiscal and personal information from Internet users attempting to purchase 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 has registered its SKECHERS mark with the USPTO (Reg. No. 1,851,977 issued August 30, 1994). The Panel finds that Complainant’s registration of its SKECHERS mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). 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 also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). 

 

Complainant asserts that the <skechersoutlets.com> and <skechershoe.com> domain names are confusingly similar to Complainant’s SKECHERS mark. Complainant asserts that Respondent’s domain names contain Complainant’s famous mark in its entirety as the dominant element in each disputed domain name, adds a generic term related to Complainant’s business (one adds “outlets” and one adds “shoe”), and adds the generic top-level domain “.com.” Additionally, the <skechershoe.com> domain name removes the letter “s” from Complainant’s mark. The Panel finds that such alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case in support of this allegation, the burden to establish that Respondent has rights or legitimate interests in the disputed domain names shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). Based on the allegations made in the Complaint, the Panel finds Complainant has established a prima facie case, thus shifting the burden to the Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See 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.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).

 

Complainant contends that Respondent is not commonly known by either of the disputed domain names.  The WHOIS information for the <skechersoutlets.com> and <skechershoe.com> domain names list “Huang Jiao c/o Jiaohuang” as the registrant, which indicates that Respondent is not commonly known by either of the disputed domain names.  Further, Complainant asserts no license or other authorization has been given to Respondent to use the SKECHERS mark.  Therefore, the Panel finds these facts, together with the absence of information to the contrary, establish the conclusion that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(ii).  See 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); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name).

 

Respondent’s disputed domain names each resolve to a website that resells the products Complainant offers under its mark and presumably offers counterfeit versions of the products Complainant offers under its mark.  The Panel finds that Respondent’s use of the <skechersoutlets.com> and <skechershoe.com> domain names are not bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).

 

Complainant also alleges that Respondent’s disputed domain names each resolve to websites that defraud Internet users by alleging to sell products to gain fiscal and personal information for presumed fraudulent behavior. The Panel finds that “phishing” for personal information does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (defining “phishing” as fooling “Internet users into sharing personal financial data so that identities can be stolen, fraudulent bills are run up, and spam e-mail is sent”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

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

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent uses the <skechersoutlets.com> and <skechershoe.com> domain names to offer counterfeit and competing products. The Panel finds Respondent’s registration and use of the disputed domain names to operate websites in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to 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 Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Complainant asserts that Internet users, searching for Complainant’s products, will be confused by Respondent’s <skechersoutlets.com> and <skechershoe.com> domain names when each resolves to a web site that includes Complainant’s mark, pictures and descriptions of the products related to Complainant’s mark, and offers similar online sales of Complainant’s products.  Complainant further asserts that Internet users may become confused as to Complainant’s sponsorship or affiliation with each disputed domain name and resolving website.  Respondent attempts to profit from this confusion by attracting Internet users seeking Complainant’s products to Respondent’s website.  Therefore, the Panel finds Respondent’s use of the <skechersoutlets.com> and <skechershoe.com> domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).

 

Complainant asserts that Respondent is using the confusingly similar disputed domain names in order to intentionally attract Internet users to its website to “phish” for users’ personal information by creating a strong likelihood of confusion with Complainant’s SKECHERS mark. The Panel presumes that Respondent then profits by using such information for fraudulent purposes. Thus, the Panel finds Respondent’s use of the disputed domain names is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

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 <skechersoutlets.com> and <skechershoe.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY((Ret.)

Dated:  April 30, 2010

 

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