Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Huang Jiao c/o Jiaohuang
Claim Number: FA1004001322018
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 name at issue is <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com>, registered with Xin Net Technology Corporation.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2010. The Complaint was submitted in both Chinese and English.
On April 29, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. 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 30, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 20, 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@blackskechers.com, postmaster@skechersboots.com, postmaster@skechersbrown.com, postmaster@skechersketchershoes.com, postmaster@skechersmens.com, postmaster@skechersmensshoes.com, postmaster@skechersshoestrainers.com, postmaster@skecherstrainers.com, postmaster@skechersurbantrack.com, and postmaster@skecherswomenuk.com. Also on April 30, 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 May 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, and <skechersurbantrack.com> are confusingly similar to Complainant’s SKECHERS mark.
Respondent’s <skechersketchershoes.com> is confusingly similar to Complainant’s SKECHERS mark.
Respondent’s <skecherswomenuk.com> is confusingly similar to Complainant’s SKECHERS mark.
2. Respondent does not have any rights or legitimate interests in the <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names.
3. Respondent registered and used the <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
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 domain names on January 25, 2010. The <skecherstrainers.com> domain name resolves to a website claiming to sell Complainant’s products. The website also prominently features Complainant’s SKECHERS mark and logo and displays photographs of goods resembling Complainant’s products. The <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names do not resolve to active websites.
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 Complainant’s registration establishes its rights in the SKECHERS 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).
Respondent’s disputed <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, and <skechersurbantrack.com> domain names are confusingly similar to its SKECHERS mark. In each of these domain names, Respondent fully incorporates Complainant’s mark. Respondent then adds generic or descriptive terms such as “black,” boots,” “brown,” “shoes,” “mens,” “trainers,” “urban,” and “track” to Complainant’s mark in the disputed domain names. Finally, Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in each of the disputed domain names. These changes do not distinguish Respondent’s domain names from Complainant’s mark. 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 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s disputed <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, and <skechersurbantrack.com> domain names are confusingly similar to Complainant’s SKECHERS mark under Policy ¶ 4(a)(i).
Complainant further asserts Respondent’s <skechersketchershoes.com> is confusingly similar to its SKECHERS mark. In the disputed domain name, Respondent includes Complainant’s mark in its entirety and then adds the descriptive term “shoes,” which describes Complainant’s products, and the gTLD “.com” to the mark. In addition, Respondent includes the term “sketchers,” which adds a letter “t” to Complainant’s mark and is a common misspelling of the mark. The Panel finds these alterations insufficiently distinguish Respondent’s disputed domain name from Complainant’s mark. See Disney Enters. Inc. v. McSherry, supra; see also Am. Express Co. v. Buy Now, supra; see also Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Reese v. Morgan, supra. Therefore, the Panel concludes Respondent’s disputed <skechersketchershoes.com> domain name is confusingly similar to Complainant’s SKECHERS mark pursuant to Policy ¶ 4(a)(i).
Respondent’s disputed
<skecherswomenuk.com> domain name is confusingly similar to its
SKECHERS mark. Respondent affixes the
generic term “women” and the country code “uk” to Complainant’s mark in the
disputed domain name. Respondent then
attaches the gTLD “.com” to Complainant’s mark in the disputed domain
name. These additions do not render
Respondent’s disputed domain name sufficiently distinct from Complainant’s
mark. See Disney Enters. Inc. v.
McSherry, supra; see also InfoSpace, Inc. v. domains Asia
Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may
believe that the website located at the <dogpileuk.com> domain name is
run by a
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
According to Policy ¶ 4(a)(ii), Complainant must first show that Respondent has no rights or legitimate interests in the disputed domain names. After Complainant establishes this prima facie case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain names under the guidelines in Policy ¶ 4(c). Prior Panels have presumed that a Respondent has no rights or legitimate interests in the disputed domain name if Respondent fails to submit a response. 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 examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims that it is not affiliated with Respondent and that is has not authorized Respondent to use its mark in a domain name. Furthermore, the WHOIS information lists the registrant of the disputed domain names as “huang jiao c/o jiaohuang.” Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names 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 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).
Complainant argues that Respondent uses the <skecherstrainers.com> domain name to “phish” for Internet users’ personal information. Complainant claims consumers have contacted its customer service regarding orders that they placed through Respondent’s website. Respondent has used the disputed domain name to fraudulently obtain personal and financial information from unsuspecting Internet users. Therefore, the Panel finds that Respondent’s “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 Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant also alleges that Respondent uses the <skecherstrainers.com> domain name to resolve to a website that sells counterfeit goods. A screen shot of the resolving website shows a site that prominently displays the SKECHERS mark and logo. The website also purports to sell Complainant’s genuine products. The Panel finds that Respondent’s use of the disputed domain name 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).”).
Furthermore, Complainant claims that Respondent uses the <skecherstrainers.com> domain name to
attempt to pass itself off as Complainant’s official website. As previously discussed, Respondent’s website
features Complainant’s mark, logo, and images of goods that closely resemble
Complainant’s products. 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).”).
Finally, Complainant alleges that the remaining <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names resolve to inactive websites. The Panel finds Respondent’s failure to make active use of the disputed domain names does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <skecherstrainers.com> domain name to divert Internet users seeking Complainant’s products disrupts its business. Therefore, the Panel finds Respondent’s use of the confusingly similar disputed domain name to redirect Internet users to a website that offers counterfeit goods supposedly made by Complainant 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”).
Respondent’s use of the <skecherstrainers.com>
domain name to create confusion as to Complainant’s sponsorship or
affiliation in order to sell counterfeit goods demonstrates bad faith. The Panel finds that these activities
constitute 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.”).
Respondent uses the <skecherstrainers.com>
domain name 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.
Complainant states that Respondent’s confusingly similar disputed domain
name has already misled Internet users into believing Respondent is affiliated
with Complainant and that these consumers provided Respondent with personal and
financial information. Thus, the Panel finds
Respondent’s use of the disputed domain name to “phish” 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 Capital One Fin. Corp. v. Howel, FA 289304 (Nat.
Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the
respondent used the domain name to redirect Internet users to a website that
imitated the complainant’s website and to fraudulently acquire personal
information from the complainant’s clients).
Respondent’s use of <skecherstrainers.com> to attempt to pass itself off as Complainant’s official website consitutes bad faith. 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).
Respondent’s <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names do not resolve to active websites. The Panel finds Respondent’s failure to make active use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <blackskechers.com>, <skechersboots.com>, <skechersbrown.com>, <skechersketchershoes.com>, <skechersmens.com>, <skechersmensshoes.com>, <skechersshoestrainers.com>, <skecherstrainers.com>, <skechersurbantrack.com>, and <skecherswomenuk.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 8, 2010
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