Skechers
Claim Number: FA1007001333477
Complainant is Skechers
U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <shapeupshoes-outlet.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 1, 2010. The Complaint was submitted in both Chinese and English.
On July 4, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <shapeupshoes-outlet.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 9, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 29, 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@shapeupshoes-outlet.com by e-mail. Also on July 9, 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 August 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <shapeupshoes-outlet.com>, is confusingly similar to Complainant’s SHAPE-UPS mark.
2. Respondent has no rights to or legitimate interests in the <shapeupshoes-outlet.com> domain name.
3. Respondent registered and used the <shapeupshoes-outlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office ("USPTO") for its SHAPE-UPS mark (e.g., Reg. 3,732,331 issued December 29, 2009). Complainant uses its SHAPE-UPS mark in connection with footwear products.
Respondent, Wu Huimin c/o Wu Huimin, registered the <shapeupshoes-outlet.com> domain name May 11, 2010. The disputed domain name resolves to a website that is nearly identical to Complainant’s official website resolving from the <skechers.com> domain name and sells counterfeit versions of Complainant’s footwear products.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant established rights in its SHAPE-UPS mark under
Policy ¶ 4(a)(i) by the multiple trademark registrations that Complainant has with
the USPTO for its SHAPE-UPS mark (e.g.,
Reg. 3,732,331 issued December 29, 2009).
A federal trademark registration is sufficient to establish rights in a
complainant’s mark. See Miller Brewing
Complainant urges that Respondent’s <shapeupshoes-outlet.com>
domain name is confusingly similar to Complainant’s SHAPE-UPS mark. The disputed domain name removes the hyphen
separating the term “SHAPE” from the term “UPS” in Complainant’s mark. The disputed domain name also removes the
letter “s” from Complainant’s mark. The
disputed domain name adds the descriptive term “shoes,” which describes
Complainant’s footwear business, adds a hyphen, and adds a generic term
“outlet” to Complainant’s SHAPE-UPS mark.
Finally, Respondent adds the generic top-level domain (“gTLD”)
“.com.” The Panel finds that the removal
of a hyphen and the letter “s” and the additions of a descriptive term, generic
term, hyphen, and a gTLD all fail to sufficiently distinguish the disputed
domain name from Complainant’s mark. See Pirelli & C. S.p.A. v. Tabriz,
FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms
of a registered mark did not differentiate the <p-zero.org> domain name
from the P ZERO mark under Policy ¶ 4(a)(i)); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum
Apr. 17, 2006) (finding that the <granarolo.com> domain name was
confusingly similar to the complainant’s registered G GRANAROLO mark); see also Kohler Co. v. Curley, FA 890812
(Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed
domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the
domain name from the mark); see also Teradyne,
Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the
“addition of a hyphen to the registered mark is an insubstantial change. Both
the mark and the domain name would be pronounced in the identical fashion, by
eliminating the hyphen"); see also Jerry
Damson, Inc. v.
Thus, this Panel finds that Respondent’s disputed <shapeupshoes-outlet.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <shapeupshoes-outlet.com> domain name. Previous panels have found that when a complainant makes a prima facie case to support its allegations, the burden of proof shifts to the respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. However, Respondent’s failed to respond to the Complaint, and in such circumstances the Panel may assume that Respondent does not have rights or legitimate interests in the <shapeupshoes-outlet.com> domain name. Nonetheless, this Panel still examines the record to determine whether evidence before the Panel suggests that Respondent does have rights or legitimate interests in the disputed domain name under a Policy ¶ 4(c) analysis. 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 contends that Respondent is not commonly known by the <shapeupshoes-outlet.com> domain name. Previous panels have concluded that a respondent is not commonly known by the disputed domain name when the WHOIS information was not similar to a disputed domain name. Complainant alleges that Respondent is not licensed to use Complainant’s mark, and Respondent failed to respond to the Complaint. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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 known by the disputed domain name). In this case, the WHOIS information identifies the domain name registrant as “Wu Huimin c/o Wu Huimin,” which the Panel finds is not similar to the <shapeupshoes-outlet.com> domain name. Complainant asserts that Respondent is not authorized to use Complainant’s SHAPE-UPS mark. Respondent failed to respond to Complainant’s assertions and failed to present any evidence that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <shapeupshoes-outlet.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges further that Respondent’s <shapeupshoes-outlet.com>
domain name resolves to a website that is nearly identical to Complainant’s
official website resolving from Complainant’s <skechers.com> domain
name. Complainant further contends that
Respondent uses its resolving website to sell counterfeit versions of
Complainant’s footwear products. The
Panel finds that Respondent’s use of the disputed domain name does not
constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i) and it does not offer 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
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant lastly urges that Respondent uses its <shapeupshoes-outlet.com> domain name to resolve to a website that sells counterfeit versions of Complainant’s footwear products. Internet users may purchase Respondent’s counterfeit versions of Complainant’s products instead of Complainant’s actual footwear products because of Respondent’s use of the <shapeupshoes-outlet.com> domain name. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) and Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the panels concluded that if a respondent is a competitor of complainant, that the respondent’s use of a confusingly similar disputed domain name constitutes bad faith registration and use. Thus, the Panel concludes that Respondent’s use of the <shapeupshoes-outlet.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel is permitted to make an inference that Respondent benefits monetarily from the sale of the counterfeit versions of Complainant’s footwear products. Respondent’s use of the confusingly similar domain name, use of a nearly identical website to Complainant’s official website, and sale of counterfeit versions of Complainant’s footwear products enhances the likelihood that Internet users may become confused as to Complainant’s affiliation with the disputed domain name and resolving website. The Panel finds that Respondent is attempting to profit from this confusion. Thus, the Panel finds that Respondent’s use of the <shapeupshoes-outlet.com> domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <shapeupshoes-outlet.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 12, 2010.
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