Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Huang Feihong
Claim Number: FA1008001341997
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 Feihong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shapeupsoutlet.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2010. The Complainant was submitted in both Chinese and English language.
On August 20, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <shapeupsoutlet.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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@shapeupsoutlet.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 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant designs, produces, and markets lifestyle footwear.
Complainant holds trademark registrations for its SHAPE-UPS mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 3,732,331, issued December 29, 2009).
Respondent is not a retailer, distributor or otherwise authorized to sell Complainant’s products, and Respondent is not authorized to use Complainant’s SHAPE-UPS mark in any way.
Respondent registered the disputed domain name on April 12, 2010.
The disputed domain name resolves to a website that sells counterfeit versions of Complainant’s products and that appears to be identical to Complainant’s official website resolving from the <skechers.com> domain name.
Additionally, the resolving website attempts to “phish” for Internet users’ private information, such as credit card numbers.
Respondent’s <shapeupsoutlet.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark.
Respondent does not have any rights to or legitimate interests in the domain name <shapeupsoutlet.com>.
Respondent registered and uses the <shapeupsoutlet.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s USPTO trademark registration is sufficient evidence of Complainant’s rights in the SHAPE-UPS mark 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, complainant has met the requirements of Policy ¶ 4(a)(i).
It is irrelevant whether Complainant registered its mark in the country where Respondent resides or operates, because a registration with any trademark authority is sufficient to meet the requirements of Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a complainant has registered its trademark in the country in which a respondent resides, it being sufficient that it can establish the existence of such rights in some jurisdiction).
Respondent’s <shapeupsoutlet.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark. The domain name incorporates the dominant features of Complainant’s mark, removes the hyphen, and adds the generic term “outlet” and the generic top-level domain (“gTLD”) “.com.” These alterations do not sufficiently distinguish Respondent’s domain name from Complainant’s mark. See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen from a complainant’s mark in forming domain names is not sufficient to differentiate the domain names from the mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); 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.
Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s domain name <shapeupsoutlet.com> is confusingly similar to Complainant’s SHAPE-UPS mark.
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Once Complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name in order to satisfy the requirements of Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has established a prima facie case in support of its contentions under this head of the Complaint, and Respondent has failed to submit a response to the allegations of that Complaint. We are therefore free to conclude that Respondent has no rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not a retailer, distributor, or otherwise authorized to sell Complainant’s products, and that Respondent is not authorized to use Complainant’s SHAPE-UPS mark in any way. Moreover, the pertinent WHOIS information lists the registrant of the contested domain name only as “Huang Feihong,” which does not resemble the domain name. On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the disputed domain for purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that 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 a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).
We also observe that Complainant alleges, without objection from Respondent, that Respondent’s domain name resolves to a website that sells counterfeit versions of Complainant’s products and that appears to be identical to Complainant’s official website resolving from the <skechers.com> domain name. In the circumstances here presented, we may comfortably presume that Respondent does as alleged for financial gain. Respondent is thus attempting to pass itself off as Complainant for illicit financial gain, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the contested domain pursuant to Policy ¶ 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (a panel finding that a respondent’s attempt to pass itself off as a complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of a contested domain name pursuant to Policy ¶ 4(c)(iii) where a respondent used a disputed domain name to present Internet users with a website that was nearly identical to that complainant’s website); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as 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).
Complainant also alleges, again without objection from Respondent, that Respondent is using the website resolving from the disputed domain name to phish for Internet users’ personal information, including credit card numbers, by operating a website that purports to sell counterfeit versions of Complainant’s footwear products. This is further evidence that Respondent lacks rights to or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (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 neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a contested domain name); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that a respondent’s use of the <allianzcorp.biz> domain name fraudulently to acquire the personal information of Internet users seeking a 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 domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration and use of the disputed domain name to sell counterfeit versions of Complainant’s lifestyle footwear products and Internet users who wish to purchase footwear from Complainant constitutes disruption of Complainant’s business. Respondent has therefore demonstrated evidence of bad faith registration and use of the contested domain name 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 a respondent, a watch dealer not authorized to sell a complainant’s goods, to that 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 … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
Respondent likely profits from the sale of counterfeit versions of Complainant’s footwear on a website that appears nearly identical to Complainant’s official website. This demonstrates that Respondent registered and is using the confusingly similar disputed domain name in an attempt to attract Internet users, for commercial gain, by creating a likelihood of confusion as to Complainant’s possible sponsorship of or affiliation with the disputed domain name. Respondent’s attempt thus to pass itself off as Complainant and profit from the resulting confusion exemplifies bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that a respondent registered and used the <wwfauction.com> domain name in bad faith because that domain name resolved to a commercial website likely to confuse Internet users because of that respondent’s prominent use of a complainant’s logo on the site); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004):
Respondent [used a complainant’s mark in its domain name] to benefit from the goodwill associated with Complainant’s … marks and us[ed] the … 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).
As already noted above, Respondent registered and is using the disputed domain name to phish for Internet users’ personal information, including credit card numbers. Respondent’s attempts at phishing are additional evidence of bad faith registration and use of the disputed domain name pursuant to 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 a respondent was using the <wellsbankupdate.com> domain name in order to acquire the personal and financial information of a complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that a respondent demonstrated bad faith registration and use of a contested domain name because it was attempting to employ a domain which was confusingly similar to a competing mark to acquire the personal and financial information of Internet users).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <shapeupsoutlet.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 5, 2010
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