national arbitration forum

 

DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Xin Jiyi

Claim Number: FA1008001339472

 

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 Xin Jiyi (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <skechers-us.com>, and <skecher-us.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn.

 

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 August 5, 2010 in both the English and Chinese languages.

 

On August 19, 2010, Beijing Innovative Linkage Technology Ltd. d/b/a Dns, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn confirmed by e-mail to the National Arbitration Forum that the <skechers-us.com> and <skecher-us.com> domain names are registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn and that Respondent is the current registrant of the names.  Beijing Innovative Linkage Technology Ltd. d/b/a Dns, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns, Beijing Innovative Linkage Technology Ltd. d/b/a Dns.Com.Cn 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 August 23, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 13, 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@skechers-us.com and postmaster@skecher-us.com by e-mail.  Also on August 23, 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 September 22, 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 <skechers-us.com> and <skecher-us.com> domain names are confusingly similar to Complainant’s SKECHERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <skechers-us.com> and <skecher-us.com> domain names.

 

3.      Respondent registered and used the <skechers-us.com> and <skecher-us.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, is an international designer, manufacturer and distributor of footwear and related accessories.  Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its SKECHERS mark (e.g., Reg. No. 1,851,977 issued August 30, 1994).  Complainant also owns multiple trademark registrations with governmental trademark authorities worldwide including with the Chinese State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 696,968 issued July 7, 1994). 

 

Respondent, Xin Jiyi, registered the <skechers-us.com> and <skecher-us.com> domain names on July 2, 2010 and July 6, 2010, respectively.  Respondent’s disputed domain names resolves to a website that appears to be identical to Complainant’s official <skechers.com> website.  Respondent’s website purports to sell Complainant’s goods without authorization. 

 

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

 

The Panel finds that Complainant has established rights in its SKECHERS mark under Policy ¶ 4(a)(i) by providing evidence of multiple trademark registrations worldwide, including those with the USPTO (e.g., Reg. No. 1,851,977 issued August 30, 1994) and SIPO (e.g., Reg. No. 696,968 issued July 7, 1994).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also 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).”).

 

Complainant contends that the <skechers-us.com> and <skecher-us.com> domain names are confusingly similar to its SKECHERS mark.  Complainant notes that the <skechers-us.com> domain name contains its mark entirely while adding a hyphen and letters “us” which Complainant argues is the abbreviation for the geographic location, United States.  Complainant also notes that the <skecher-us.com> domain name contains a misspelled version of its mark, by omitting the letter “s” in addition to adding a hyphen and the letters “us.”  The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) where the domain names contain Complainant’s mark or a commonly misspelled version of that mark and add a hyphen and the letters “us” as well as the generic top-level domain (“gTLD”) “.com.”  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the 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.”).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights and legitimate interests in the <skechers-us.com> and <skecher-us.com> domain names.  Complainant is required to make a prima facie case in support of these allegations.  After Complainant has produced a prima facie case the burden of proof shifts to Respondent to establish that it has rights or  legitimate interests in the disputed domain names. 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.”).  The Panel finds that Complainant has produced a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain names.  See 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.”).  The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).

 

Complainant asserts that it has not granted Respondent permission to use its SKECHERS mark, and that Respondent is not commonly known by the disputed domain names.  The WHOIS information for the <skechers-us.com> and <skecher-us.com> domain names identify, “Xin Jiyi” as the registrant of the domain names, and Respondent has not come forward with any evidence to refute Complainant’s claims.  Therefore the Panel finds that, absent evidence from Respondent indicating otherwise, Respondent lacks rights and legitimate interests in the <skechers-us.com> and <skecher-us.com> 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent’s <skechers-us.com> and <skecher-us.com> domain names resolve to a website that appears identical to Complainant’s official <skechers.com> website and offers Complainant’s footwear products for sale while also displaying Complainant’s logos and trademarks throughout the site.  Complainant asserts that it has not granted Respondent permission to sell its goods or any variation of its footwear products. Therefore, the Panel finds that Respondent’s use of the confusingly similar <skechers-us.com> and <skecher-us.com> domain names to sell Complainant’s goods without authorization is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).

 

Complainant further asserts that Respondent’s use of the domain names is an attempt to “phish” or maliciously acquire consumers private information such as credit card numbers through the fraudulent website resolving from the disputed domain names.  Complainant argues that Respondent is selling counterfeit or unauthorized goods through the domain names in order to steal account information for potential customers of Complainant.  Therefore, the Panel finds that Respondent’s use of the disputed domain name to gather personal and financial information from Internet users who think they are dealing with Complainant is further evidence that Respondent lacks rights and legitimate interests in the domain names under Policy ¶ 4(a)(ii).  See 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); 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). 

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the confusingly similar disputed domain names to redirect Internet users seeking Complainant’s products to Respondent’s website creates a disruption in Complainant’s business.  Complainant contends that Respondent’s unauthorized sale of Complainant’s goods actively removes business from Complainant.  The Panel finds that Respondent’s use of the <skechers-us.com> and <skecher-us.com> domain names are evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Complainant further argues that Respondent’s use of the disputed domain names to intentionally attract Internet users to its website for commercial gain is further evidence of bad faith registration and use.  The Panel finds that Respondent’s use of the <skechers-us.com> and <skecher-us.com> domain names to sell Complainant’s products where it is not authorized to do so is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv).  See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); 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.”).

 

Complainant has also alleged that Respondent is using the disputed domain names for a phishing scheme in order to acquire the personal and financial information of Internet users who believe they are dealing with Complainant.  In such an instance the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).  See 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); 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).

 

The Panel finds that 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 <skechers-us.com> and <skecher-us.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  September 23, 2010

 

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