Skechers
Claim Number: FA1005001324433
Complainant is Skechers U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <skechersshapeupsshoes.com>, registered with FASTDOMAIN, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2010.
On May 13, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <skechersshapeupsshoes.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 May 17, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@skechersshapeupsshoes.com. Also on May 17, 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 June 10, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skechersshapeupsshoes.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks.
2. Respondent does not have any rights or legitimate interests in the <skechersshapeupsshoes.com> domain name.
3. Respondent registered and used the <skechersshapeupsshoes.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers
Respondent registered the <skechersshapeupsshoes.com> domain name on February 23, 2010. The disputed domain name previously resolved to a website that purported to be a “blog” in which Internet users could purchase Complainant’s products from third-party merchants. The website prominently displayed Complainant’s SKECHERS mark and provided links to third-party websites. The disputed domain name currently resolves to a search webpage.
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.
Respondent registered the <skechersshapeupsshoes.com> domain name on February 23, 2010.Complainant claims rights in the SKECHERS mark through its registrations of the mark with the USPTO (e.g. Reg. No. 1,851,977 registered on August 30, 1994) and STPO (Reg. No. 696,968 registered on July 7, 1994). Likewise, Complainant asserts rights in the SHAPE-UPS mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,732,331 registered on December 29, 2009). The Panel finds these registrations sufficiently establish Complainant’s rights in the SKECHERS and SHAPE-UPS marks 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues Respondent’s <skechersshapeupsshoes.com> domain name is confusingly similar to its SKECHERS and SHAPE-UPS marks. Respondent combines Complainant’s SKECHERS and SHAPE-UPS marks in the disputed domain name. In addition, the disputed domain name deletes the hyphen from Complainant’s SHAPE-UPS mark and adds the descriptive term “shoes,” which describes Complainant’s products. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s marks in the disputed domain name. The Panel finds combining Complainant’s two marks and making slight alterations does not sufficiently distinguish Respondent’s disputed domain name from Complainant’s marks. See The McGraw-Hill Co., Inc. v. Umbeke Membe c/o Deleting Domain, FA 1223759 (Nat. Arb. Forum Oct. 29, 2008) (finding confusing similarity where Respondent combined the Complainant’s GLENCOE and MCGRAW-HILL marks to form the <glencoemcgrawhill.com> domain name); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also 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 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 <skechersshapeupsshoes.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks under Policy ¶ 4(a)(i).
The Panel finds Complainant satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the <skechersshapeupsshoes.com> domain name. The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. Previous panels have viewed Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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.”). Although Respondent failed to submit a Response, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts it is not affiliated with Respondent and that it has not given Respondent permission to use its marks in a domain name. Furthermore, the WHOIS information lists “Rong Zhang c/o Zhangrong” as the registrant of the <skechersshapeupsshoes.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain names 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 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).
Respondent’s <skechersshapeupsshoes.com> domain name currently resolves to a search webpage. A screen shot of the website shows the website merely contains a search engine box. The Respondent has failed to include additional information or features to the website. Therefore, the Panel finds Respondent’s failure to make active use of the disputed domain name 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).”).
Complainant argues Respondent previously used the <skechersshapeupsshoes.com> domain
name in an attempt to pass off itself off as a “blog” in which Internet users
are able to purchase Complainant’s products from third-party merchants. Complainant provides a screen shot of
Respondent’s website, which prominently displays Complainant’s SKECHERS mark
and provides links to third-party websites purporting to sell Complainant’s
products. In addition, the screen shot
shows the text “Shazahn has been signed up as the brand ambassador for
Skechers, one of the leading shoe manufacturers globally.” The Panel finds that Respondent’s efforts to
pass itself off as affiliated with Complainant is 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).”).
The Panel finds Complainant satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s previous use of the <skechersshapeupsshoes.com> domain name to resolve to a website that offers competing products diverts Internet users seeking Complainant’s products and disrupts its business. Therefore, the Panel finds this use constitutes registration and use in bad faith under 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent currently uses <skechersshapeupsshoes.com> to attempt to pass itself off as Complainant’s affiliate. The Panel finds that this use also supports a finding of registration and use in bad faith 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 <skechersshapeupsshoes.com> domain name does not currently resolve to an active website. The Panel finds Respondent’s failure to make active use of the disputed domain name 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 Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersshapeupsshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 11, 2010
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