Skechers
Claim Number: FA1004001319071
Complainant is Skechers
U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <womensshapeups.com>, registered with Godaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2010.
On April 14, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <womensshapeups.com> 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 April 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@womensshapeups.com. Also on April 20, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <womensshapeups.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark.
2. Respondent does not have any rights or legitimate interests in the <womensshapeups.com> domain name.
3. Respondent registered and used the <womensshapeups.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers
Respondent registered the <womensshapeups.com> domain name on January 15, 2010. Prior to receiving Complainant’s cease-and-desist letter, Respondent utilized the disputed domain name to resolve to a website that purported to be a blog but actually featured third-party advertisements. The disputed domain name currently resolves to a website featuring a commercial search engine and hyperlinks to Complainant’s website and other third-party websites, some of which compete with Complainant.
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.
Previous panels have concluded that a complainant’s
trademark registration with a federal trademark authority is sufficient to
establish rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat.
Arb. Forum Apr. 26, 2006) (finding that the complainant had established
rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks
with the USPTO); see also Miller Brewing Co. v. Miller Family,
FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the
complainant had established rights to the MILLER TIME mark through its federal
trademark registrations). Complainant
holds multiple trademark registrations with the USPTO for its SHAPE-UPS mark (e.g., Reg. No. 3,732,331 issued December
29, 2009). While Respondent resides in
Complainant contends that Respondent’s <womensshapeups.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark. Complainant claims that the disputed domain name incorporates Complainant’s entire mark after removing the hyphen separating the terms in the mark. Complainant further alleges that Respondent has simply added the descriptive term “womens,” which describes Complainant’s female focused footwear products, and the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the removal of a hyphen, the addition of a descriptive term, and the addition of a gTLD all fail to adequately distinguish a disputed domain name from a complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). As a result, the Panel holds that Respondent’s <womensshapeups.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark under Policy ¶ 4(a)(i).
The Panel determines that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <womensshapeups.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <womensshapeups.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant alleges that Respondent is not commonly known by the <womensshapeups.com> domain name. Complainant claims that Respondent is not authorized or licensed to use Complainant’s SHAPE-UPS mark. Complainant further alleges that Respondent is not affiliated with Complainant in any way. The WHOIS information identifies the domain name registrant as “Bruno Polimeni,” which Complainant contends is not similar to the <womensshapeups.com> domain name. Respondent has failed to respond to any of Complainant’s allegations and failed to present any evidence that would allow the Panel to find that Respondent is commonly known by the disputed domain name. Consequently, based on the evidence in the record, the Panel concludes that Respondent is not commonly known by the <womensshapeups.com> 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent, through the <womensshapeups.com> domain name, formerly operated a website that purported to be a blog but instead featured third-party advertisements that provided Respondent click-through fees. Complainant argues that after Respondent’s receipt of Complainant’s cease-and-desist letter, Respondent changed the resolving website to feature a commercial search engine and hyperlinks to both Complainant and Complainant’s competitors in the footwear products industry. Complainant contends that Respondent also receives click-through fees from the search engine and hyperlinks. The Panel finds that Respondent’s use of the <womensshapeups.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s <womensshapeups.com> domain name currently resolves to a website containing hyperlinks to Complainant and Complainant’s competitors in the footwear products industry. Complainant argues that Internet users attempting to purchase Complainant’s footwear products may purchase similar products from one of Complainant’s competitors solely because of Respondent’s use of the confusingly similar disputed domain name. Complainant further claims that even the hyperlinks to Complainant contained on the resolving website disrupt Complainant’s business because Complainant does not control the advertising content. For these reasons, the Panel determines that Respondent’s use of the <womensshapeups.com> domain name disrupts Complainant’s footwear products business, which constitutes bad faith registration and use according to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent formerly used the <womensshapeups.com>
domain name to resolve to a website that contained third-party advertisements. Complainant contends that the disputed domain
name currently resolves to a website featuring a commercial search engine and
hyperlinks to Complainant and Complainant’s competitors. Complainant alleges that Respondent received
click-through fees from its prior and current use of the disputed domain
name. Complainant claims that Internet
users may become confused as to Complainant’s affiliation with or sponsorship
of the <womensshapeups.com> domain name, resolving website,
commercial search engine, or featured advertisements and hyperlinks. The Panel concludes that Respondent’s use of
the confusingly similar <womensshapeups.com> domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank
of Am. Corp. v.
The Panel finds 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 <womensshapeups.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 17, 2010
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