national arbitration forum

 

DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. lin jianhua

Claim Number: FA1008001343712

 

PARTIES

Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A. Letmer and Philip Nulud, of Kleinberg & Lerner, LLP, California USA.  Respondent is lin jianhua, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skechershapeup.com> registered with HICHINA ZHICHENG TECHNOLOGY LTD.

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2010; the National Arbitration Forum received payment on August 30, 2010.

 

On August 30, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the skechershapeup.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 September 8, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the skechershapeup.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 September 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@skechershapeup.com.  Also on September 8, 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 October 11, 2010, pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <skechershapeup.com> domain name is confusingly similar to Complainant’s SKECHERS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <skechershapeup.com> domain name.

 

3.      Respondent registered and used the <skechershapeup.com> domain name 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, provides evidence of numerous trademark registrations with federal trademark agencies throughout the world, including with the United States Patent and Trademark Office (“USPTO”) and China’s State Intellectual Property Office (“SIPO”):

 

USPTO

 

Registration Number Issue Date

1,851,977                                November 30, 1994

2,145,468                                March 17, 1998

2,313,660                                February 1, 2000

 

SIPO

 

Registration Number Issue Date

696,968                                   July 7, 1994

873,647                                   September 21, 1996

 

Complainant uses its SKECHERS mark to design, market, and sell footwear products.  Complainant has utilized its mark for such a purpose since 1992.  One of Complainant’s newest brands of footwear products is its SHAPE-UPS brand.

 

Respondent, lin jianhua, registered the <skechershapeup.com> domain name on May 11, 2010.  The disputed domain names resolves to a website that appears to be identical to Complainant’s official website, <skechers.com>, featuring the same images, layout, fonts, and footwear products.  At the website resolving from the disputed domain name, Respondent sells unauthorized or counterfeit versions of Complainant’s products.  Furthermore, Respondent attempts to phish for Internet users’ personal information when Internet users attempt to make a purchase from the resolving website.

 

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

 

Complainant contends that it has established rights in its SKECHERS mark under Policy ¶ 4(a)(i).  To that end, Complainant provides an extensive list and evidence of its trademark registrations for its SKECHERS mark around the world. Specific to this case, Complainant holds a trademark registration with the USPTO, in the country that Complainant resides in, and with China’s SIPO, in the country that Respondent resides in:

 

USPTO

 

Registration Number Issue Date

1,851,977                                November 30, 1994

2,145,468                                March 17, 1998

2,313,660                                February 1, 2000

 

SIPO

 

Registration Number Issue Date

696,968                                   July 7, 1994

873,647                                   September 21, 1996

 

Based on this evidence submitted by Complainant, the Panel determines that Complainant has sufficiently established rights in its SKECHERS mark under Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).

 

Respondent’s <skechershapeup.com> domain name contains Complainant’s SKECHERS mark in its entirety.  Respondent combines Complainant’s mark with the descriptive misspelled terms “hape” and “up,” which likely reference Complainant’s SHAPE-UPS brand.  The Panel holds that the addition of descriptive terms to Complainant’s mark does not sufficiently prevent confusing similarity.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  Moreover, Respondent adds the generic top-level domain name (“gTLD”) to Complainant’s mark and the descriptive terms.  As a top-level domain is required in all domain names, the Panel finds that the addition of a gTLD is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.  See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).  Thus, the Panel concludes that Respondent’s <skechershapeup.com> domain name is confusingly similar to Complainant’s SKECHERS mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <skechershapeup.com> domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its 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 Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the Complainant, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <skechershapeup.com> domain name under Policy ¶ 4(c).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

In order for a respondent to be commonly known by a disputed domain name, previous panels have focused on whether the WHOIS information was similar to the disputed domain name, whether the complainant authorized the respondent to use its mark, and whether the respondent had presented any evidence that it was commonly known by the disputed domain name.  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).  The WHOIS information for the <skechershapeup.com> domain name identifies the domain name registrant as “lin jianhua ,” which the Panel finds is not similar to the disputed domain name.  In the Complaint, Complainant extensively argues that Respondent is not commonly known by the disputed domain name because Respondent is not authorized to use its SKECHERS mark and that Respondent is not a retailer, a distributor, or authorized to sell Complainant’s products.  As this is a default case, Respondent has not presented any evidence that would indicate that Respondent is commonly known by the <skechershapeup.com> domain name.  Therefore, the Panel determines that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 

 

As stated in the findings, Respondent is using the <skechershapeup.com> domain name to operate a website that appears to be identical to Complainant’s official website, resolving from <skechers.com>.  The Panel finds that this constitutes an attempt by Respondent to pass itself off as Complainant, which is, in and of itself, a sufficient reason to determine that Respondent lacks rights and legitimate interests in the disputed domain name.  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).  However, Respondent further uses the disputed domain name to sell footwear products that appear to be unauthorized or counterfeit versions of Complainant’s footwear products.  Respondent’s use of the disputed domain name in such a way directly competes with Complainant, which is further evidence of Respondent’s lack of rights and legitimate interests in the <skechershapeup.com> domain name.  See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”).  Moreover, Respondent attempts to phish for Internet users’ personal information, which does not establish rights and legitimate interests in the disputed domain name.  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).  The Panel concludes, based on the myriad ways that Respondent uses the disputed domain name, that Respondent’s uses of the <skechershapeup.com> domain name do not constitute 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 pursuant to Policy ¶ 4(c)(iii). 

 

The Panel finds that Complainant has established the elements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s use of the <skechershapeup.com> domain name to offer unauthorized or counterfeit versions of Complainant’s footwear products inevitably competes with Complainant use of its SKECHERS mark to sell Complainant’s actual footwear products.  Therefore, the Panel determines that Respondent’s use of the confusingly similar disputed domain name disrupts Complainant’s footwear business, which constitutes 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).”).

 

Respondent likely commercially benefits from the sale of footwear products on the website resolving from the <skechershapeup.com> domain name.  Respondent’s use of the confusingly similar domain name and the strong similarities between Respondent’s website and Complainant’s official website provide evidence that Respondent is attempting to confuse Internet users as to Complainant’s sponsorship, affiliation, and endorsement of the disputed domain name and resolving website.  As the Panel finds that Respondent is commercially benefiting from this confusion, the Panel holds that Respondent’s use of the <skechershapeup.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

The website resolving from the <skechershapeup.com> domain name is nearly identical to Complainant’s official website, resolving from the <skechers.com> domain name.  The website contains the same pictures, layout, and font as Complainant’s website.  Based on this information, the Panel infers that Respondent is attempting to pass itself off as Complainant with its <skechershapeup.com> domain name.  Respondent’s attempt to pass itself off as Complainant is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).

 

Respondent attempts to phish for the personal information of Internet users that access Respondent’s website.  The Panel finds that this use is clear evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also 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).

 

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

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

 

Accordingly, it is Ordered that the <skechershapeup.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  October 17, 2010

 

 

 

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