Skechers U.S.A., Inc and Skechers U.S.A., Inc II v. Ye Yan Zhi
Claim Number: FA1008001342161
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 Ye Yan Zhi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shapeupsskechers.com>, registered with BIZCN.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2010.
On August 24, 2010, BIZCN.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <shapeupsskechers.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name. BIZCN.COM, INC. has verified that Respondent is bound by the BIZCN.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 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@shapeupsskechers.com by e-mail. Also on August 26, 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 September 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <shapeupsskechers.com> domain name is confusingly similar to Complainant’s SHAPE-UPS and SKECHERS marks.
2. Respondent does not have any rights or legitimate interests in the <shapeupsskechers.com> domain name.
3. Respondent registered and used the <shapeupsskechers.com> 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, manufacturers, advertises, and sells apparel and lifestyle footwear under both its SKECHERS and SHAPE-UPS marks. Complainant has registered its SKECHERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977 issued August 30, 1994) and with China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 1,717,145 issued February 20, 2002). Complainant has also registered its SHAPE-UPS mark with the USPTO (e.g., Reg. No. 3,732,331 issued December 29, 2009).
Respondent, Ye Yan Zhi, registered the disputed domain name on April 1, 2010. The disputed domain name resolves to a website that appears identical to Complainant’s official website resolving from the <skechers.com> domain name in an attempt to mislead Internet users’ into believing they can purchase Complainant’s merchandise. Respondent also attempts to “phish” for Internet users’ personal and financial 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 asserts rights in its SKECHERS mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,851,977 issued August 30, 1994) and with China’s SIPO (e.g., Reg. No. 1717145 issued February 20, 2002). The Panel finds that registration of this mark with the USPTO is sufficient evidence of Complainant’s rights in the 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, [the] complainant has met the requirements of 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 also asserts rights in its SHAPE-UPS mark based on its registration with the USPTO (e.g., Reg. No. 3,732,331 issued December 29, 2009). The Panel finds that USPTO registration is sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i) even when the mark is not registered in the country where Respondent resides or operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant alleges that Respondent’s <shapeupsskechers.com> domain name is confusingly similar to Complainant’s SHAPE-UPS and SKECHERS marks. Respondent’s disputed domain name incorporates both marks in their entirety, while merely deleting the hyphen from the SHAPE-UPS mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the combination of two marks in a single domain name creates confusing similarity between the domain name and the marks. 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). The Panel further finds that the omission of a hyphen and addition of a gTLD do not distinguish a disputed domain name from a mark. See 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 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 <shapeupsskechers.com> domain name is confusingly similar to Complainant’s SHAPE-UPS and SKECHERS marks.
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record in light of the factors outlined in Policy ¶ 4(c) to make a complete determination as to whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not a retailer, distributor, or otherwise authorized to sell Complainant’s products, nor is Respondent authorized to use Complainant’s marks in any way. Complainant further asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information indicates that the registrant of the disputed domain name is “Ye Yan Zhi.” Complainant’s assertions, coupled with the WHOIS information, leads the Panel to conclude that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests 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 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).
Complainant argues that Respondent’s disputed domain name resolves to a website virtually identical to Complainant’s official website and that Respondent is passing itself off as Complainant in order to mislead Internet users into believing that they can purchase Complainant’s authentic footwear products from Respondent’s website. The Panel agrees and finds that Respondent’s attempt to pass itself off as Complainant and mislead Internet users is 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). 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 Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Complainant alleges that Respondent is using the disputed domain name in an attempt to phish for Internet users’ personal and financial information. The Panel finds that use of a disputed domain name for such a purpose is further evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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)); see also 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).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant alleges that Respondent registered and is using the disputed domain name in an attempt to pass itself off as Complainant and sell unauthorized versions of Complainant’s footwear products. The Panel finds that this constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to 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 argues that Respondent’s resolving website is nearly identical to Complainant’s official website and that Respondent is trying to pass itself off as Complainant. The Panel finds that by selling unauthorized versions of Complainant’s footwear products, Respondent is using the confusingly similar disputed domain name in order to intentionally attract Internet users to its website for commercial gain by creating confusion as to Complainant’s association with the disputed domain name and resolving website. The Panel further finds that this is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
The Panel finds that Respondent’s registration and use of the disputed domain name to phish for Internet users’ personal and financial information is further evidence of Respondent’s bad faith under 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 the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); 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) is 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 <shapeupsskechers.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 30, 2010
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