Skechers U.S.A., Inc., and Skechers U.S.A., Inc. II v. li sheng
Claim Number: FA1008001342688
Complainant is Skechers U.S.A., Inc., and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A. Lerner, of Kleinbert & Lerner, LLP, California, USA. Respondent is li sheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shapeupshoes-store.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 August 23, 2010. The Complaint was submitted in both the Chinese and English languages.
On August 24, 2010, HiChina Zhicheng Technology LTD confirmed by e-mail to the National Arbitration Forum that the <shapeupshoes-store.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 August 25, 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 14, 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-store.com by e-mail. Also on August 25, 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 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 (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:
1. The domain name that Respondent registered, <shapeupshoes-store.com>, is confusingly similar to Complainant’s SHAPE-UPS mark.
2. Respondent has no rights to or legitimate interests in the <shapeupshoes-store.com> domain name.
3. Respondent registered and used the <shapeupshoes-store.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, is an international designer, manufacturer and distributor of footwear and related products. Complainant owns several trademark registrations for its SHAPE-UPS mark, including registrations with the United States Patent and Trademark Office ("USPTO") (Reg. No. 3,732,331 issued December 29, 2009) and with the Hong Kong Intellectual Property Department (“HKIPD”) (Reg. No. 301294687 issued February 27, 2009).
Respondent, li sheng, registered the <shapeupshoes-store.com> domain name May 11, 2010. Respondent’s disputed domain name resolves to Respondent’s website that advertises and sells Complainant’s footwear products without authorization.
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 submitted evidence to show that it owns several trademark registrations with governmental trademark authorities worldwide including registrations with the USPTO (Reg. No. 3,732,331 issued December 29, 2009) and the HKIPD
(Reg. No. 301294687 issued February 27, 2009). The Panel finds that Complainant established rights in its SHAPE-UPS mark through such registrations under Policy ¶ 4(a)(i). 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that the <shapeupshoes-store.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark. Complainant contends that the disputed domain name contains its mark, absent the hyphen and letter “s” while adding the descriptive term “shoes” a hyphen and the generic term “store.” Previous panels have determined that the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant to Policy ¶ 4(a)(i). Complainant alleges that such omissions, changes and additions to its mark are not sufficient to distinguish the domain name from its mark.
The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also 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 Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the <shapeupshoes-store.com> domain name. Complainant is required to make a prima facie case to support these allegations. After Complainant has made a prima facie case the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. 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.”); see also 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.”).
The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the <shapeupshoes-store.com> 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel, still examines the record to determine whether evidence in the record suggests that Respondent has such rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission to use its SHAPE-UPS mark, and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <shapeupshoes-store.com> domain name identifies, “li sheng” as the registrant of the domain name. The Panel finds that, absent evidence from Respondent indicating otherwise, that Respondent lacks rights and legitimate interests in the <shapeupshoes-store.com> domain name under a Policy ¶ 4(c)(ii) analysis. 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).
Respondent’s <shapeupshoes-store.com> domain name resolves to a website that displays Complainant’s footwear products for sale, and also displays Complainant’s logo throughout the site. Complainant contends that some of the images and content on Respondent’s website came directly from Complainant’s official websites. Complainant asserts that it has not granted Respondent permission to sell its goods, and has not given Respondent papers to be a licensed product retailer. Therefore, the Panel finds that Respondent’s use of the confusingly similar <shapeupshoes-store.com> domain name to sell Complainant’s goods, or counterfeit goods under Complainant’s mark without authorization is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant further contends that Respondent is using the disputed domain name that mimics Complainant’s official website in order to gain access to Internet users’ personal and financial information in a phishing scheme. Complainant contends that Respondent’s phishing scheme is further evidence that Respondent lacks rights and legitimate interests in the domain name. The Panel agrees and finds that Respondent’s use of the disputed domain name to gain access to Internet users’ personal and financial information is further evidence that Respondent lacks rights and legitimate interests in the domain name pursuant to 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 HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds that Respondent has not rights or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the confusingly similar disputed domain name 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 <shapeupshoes-store.com> domain name is 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 name 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 <shapeupshoes-store.com> domain name 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.”).
The Panel further finds that Respondent’s use of the disputed domain name to phish for the personal and financial information of Internet users is also evidence of bad faith registration and use under Policy ¶ 4(a)(ii). 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 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-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 11, 2010.
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