Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. China
Claim Number: FA1008001341730
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 China (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers-shape-ups.net>, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 17, 2010.
On August 18, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skechers-shape-ups.net> 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 August 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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-shape-ups.net by e-mail. Also on August 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 formal 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 the Honorable Charles K. McCotter, Jr. (Ret.) 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 <skechers-shape-ups.net> 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 <skechers-shape-ups.net> domain name.
3. Respondent registered and used the <skechers-shape-ups.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers U.S.A., Inc and Skechers U.S.A., Inc. II, owns the exclusive right to design, manufacture, promote, sell, and distribute footwear, apparel, bags, watches, and other products bearing the SKECHERS and SHAPE-UP marks. Complainant holds multiple trademark registrations for its SKECHERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,145,468 issued March 17, 1998) and with China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 696968 issued July 7, 2004). Complainant also holds trademark registrations for its SHAPE-UPS mark with the USPTO (e.g., Reg. No. 3,732,331 issued December 29, 2009) and with China’s SIPO (e.g., Reg. No. 1717145 issued February 21, 2002).
Respondent is registered with GoDaddy.com as China, xiamen, fuyian, China. There is no indication that the named Respondent, China, is actually the People’s Republic of China or any other country or government.
Respondent, China, registered the <skechers-shape-ups.net> domain name on July 9, 2010. The disputed domain name resolves to a website offering counterfeit versions of the Complainant’s products. Respondent’s website features images and pictures copied straight from Complainant’s <www.skechers.com> website. Complainant also has reason to believe that Respondent is using the <skechers-shape-ups.net> domain name in an attempt to “phish” or maliciously acquire consumers’ private information.
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.
Complainant contends it has established rights in the SKECHERS mark based on its holding of trademark registrations with both the USPTO (e.g., Reg. No. 2,145,468 issued March 17, 1998) and China’s SIPO (e.g., Reg. No. 696968 issued July 7, 2004). Complainant also claims rights in its SHAPE-UPS mark based on its registration of the same with the USPTO (e.g., Reg. No. 3,732,331 issued December 29, 2009) and with China’s SIPO (e.g., Reg. No. 1717145 issued February 21, 2002). The Panel finds that trademark rights with a federal trademark authority are sufficient to establish rights in a mark. 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends Respondent’s <skechers-shape-ups.net> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks. The disputed domain name combines Complainant’s SKECHERS and SHAPE-UPS marks, adds a hyphen, and adds the generic top-level domain (gTLD) “.com.” The Panel determines that confusing similarity exists where Respondent has combined two of Complainant’s marks in the disputed domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Previous panels have found that the addition of a hyphen does not alter or differentiate the domain name from the mark. See 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").It has also been found that the addition of a gTLD fails to adequately distinguish a disputed domain name from Complainant’s mark. See Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”). Therefore, the Panel concludes Respondent’s <skechers-shape-ups.net> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <skechers-shape-ups.net> domain name. Previous panels have found that when a complainant makes a prima facie case in support of 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 the 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 <skechers-shape-ups.net> domain name. 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). 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 VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
The Complainant asserts that Respondent is not authorized to use the SKECHERS or the SHAPE-UPS marks. The WHOIS information identifies the domain name registrant simply as “China.” The Panel finds that Respondent is not commonly known by disputed domain name. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the <skechers-shape-ups.net> domain name pursuant to Policy ¶ 4(c)(ii). 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 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).
Respondent uses the <skechers-shape-ups.net> domain name to directly offer counterfeit products, while using identical images copied from Complainant’s website . The Panel finds Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See 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); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).
The Complainant also asserts that Respondent is using the <skechers-shape-ups.net> domain name in a “phishing” scheme, attempting to obtain private information from consumers, including credit card numbers. The Panel does not recognize this as 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 under Policy ¶ 4(c)(iii). 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 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)).
The Panel finds Policy 4(a)(ii) has been satisfied.
Respondent uses the <skechers-shape-ups.net> domain name to offer counterfeit goods. Internet users interested in purchasing Complainant’s footwear or apparel may end up purchasing the counterfeit products because of Respondent’s confusingly similar disputed domain name and the fact that Respondent has designed their site to look like the Complainant’s <www.skechers.com> website by copying images directly from Complainant’s official website. The Panel finds Respondent’s use of <skechers-shape-ups.net> domain name disrupts Complainant’s footwear and apparel business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) (rejecting the Mission KwaSizabantu approach and holding that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner”); 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”).
The Panel infers Respondent profits from the sale of counterfeit footwear and goods on the website resolving from the <skechers-shape-ups.net> domain name. Internet users, searching for the Complainant’s footwear and apparel products, may become confused as to Complainant’s sponsorship or affiliation with the disputed domain name and resolving website. Respondent attempts to profit from this confusion. The Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
The Panel finds Respondent’s use of the <skechers-shape-ups.net> domain name for purposes of attempting to “phish” consumers’ private information is in bad faith pursuant to Policy ¶ 4(a)(iii). See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates); see also 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).
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 <skechers-shape-ups.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 28, 2010
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