national arbitration forum

 

DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. lisin / sin li

Claim Number: FA1009001344882

 

PARTIES

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 lisin / sin li (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skechers-footwear.com>, registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically September 3, 2010.

 

On September 13, 2010, JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD confirmed by e-mail to the National Arbitration Forum that the <skechers-footwear.com> domain name is registered with JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD and that Respondent is the current registrant of the name.  JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. LTD verified that Respondent is bound by the JIANGSU BANGNING SCIENCE & TECHNOLOGY CO. 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 September 15, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 5, 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-footwear.com by e-mail.  Also on September 15, 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 October 18, 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 finds 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.

 

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 <skechers-footwear.com> domain name is confusingly similar to Complainant’s SKECHERS mark.

 

2.      Respondent has no rights to or legitimate interests in the <skechers-footwear.com> domain name.

 

3.      Respondent registered and used the <skechers-footwear.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Skechers U.S.A., Inc. II., is a wholly owned subsidiary of Complainant, Skechers U.S.A., Inc.  Hereinafter, these parties will be collectively referred to as “Complainant.”  Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SKECHERS mark (e.g., Reg. No. 1,851,977 issued August 30, 1994).  Complainant also holds trademark registrations with China’s State Intellectual Property Office (“SIPO”) for the SKECHERS mark (e.g., Reg. No. 873,647 issued September 21, 1996).  Complainant uses the SKECHERS mark primarily for footwear and apparel.

 

Respondent registered the <skechers-footwear.com> domain name August 20, 2010.  The disputed domain name resolves to a website that imitates Complainant’s official website.  The resolving website also offers for sale counterfeit versions of Complainant’s footwear products.

 

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."

 

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.

 

Preliminary Issue: Multiple Complainants

 

Two Complainants filed this proceeding: Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II.  Skechers U.S.A., Inc. II. is a wholly owned subsidiary of Skechers U.S.A., Inc.

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

In this case, Complainants are affiliated companies.  Thus, the Panel accepts that the evidence in the Complaint is sufficient to establish a nexus or link between the Complainants and it will treat them as a single entity in this proceeding.

 

Identical to and/or Confusingly Similar

 

Complainant asserts rights in the SKECHERS mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,851,977 issued August 30, 1994).  Complainant also asserts rights in the SKECHERS mark through its registrations with the SIPO (e.g., Reg. No. 873,647 issued September 21, 1996).  The Panel finds that these trademark registrations sufficiently prove Complainant’s rights in the SKECHERS mark pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also 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).

 

Complainant urges that Respondent’s <skechers-footwear.com> domain name is confusingly similar to its SKECHERS mark.  Respondent replicates Complainant’s mark in the disputed domain name and then merely adds a hyphen and the descriptive term “footwear,” which references Complainant’s products.  Respondent also affixes the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds that these additions do not negate a finding of confusing similarity.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Accordingly, the Panel finds that Respondent’s <skechers-footwear.com> domain name is confusingly similar to Complainant’s SKECHERS mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the <skechers-footwear.com> domain name under Policy ¶ 4(a)(ii).  The burden of proof then shifts to Respondent to prove that it does have such rights or legitimate interests in the disputed domain name.  The Panel may look upon Respondent’s failure to submit a Response as evidence that Respondent lacks rights and 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 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.”).  However, despite Respondent’s failure to respond, this Panel still evaluates the record to determine whether evidence there suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Complainant alleges that it has not authorized Respondent to use the SKECHERS mark in any way.  Additionally, the WHOIS information lists “lisin / sin li” as the registrant of the disputed domain name, which the Panel finds is not similar to the <skechers-footwear.com> domain name.  Therefore, the Panel finds that Complainant’s assertions, combined with the WHOIS registrant information, indicate that Respondent is not commonly known by the <skechers-footwear.com> domain name under a Policy ¶ 4(c)(ii) analysis.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant further contends the <skechers-footwear.com> domain name resolves to a website that purports to sell Complainant’s official footwear products.  Complainant submits a screen shot of the resolving website.  This screen shot shows a site that displays Complainant’s SKECHERS mark and logo.  The resolving website also features images of Complainant’s “shape-up” shoes.  Based on the evidence in the record, the Panel finds that Respondent uses the disputed domain name to profit from the sale of counterfeit versions of Complainant’s footwear products.  Therefore, the Panel determines that Respondent does not use the <skechers-footwear.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  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).”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”).

 

Complainant also urges that Respondent uses the <skechers-footwear.com> domain name to phish for Internet users’ credit card and financial information.  The Panel agrees.  Therefore, the Panel finds that this conduct provides further evidence that Respondent does not use the <skechers-footwear.com> domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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)); 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).

 

Finally, Complainant maintains that Respondent’s resolving website appears to be identical to Complainant’s official website at the <skechers.com> domain name.  A screen shot of the resolving website shows Complainant’s SKECHERS mark and logo prominently displayed throughout the site.  The screen shot also shows copies of images and pictures that appear on Complainant’s official website.  Finally, the website resolving from the disputed domain name copies the layout, design, fonts, and other distinctive aspects of Complainant’s official website.  Therefore, the Panel finds that Respondent uses the <skechers-footwear.com> domain name in an attempt to pass itself off as Complainant.  Accordingly, the Panel finds that such conduct provides additional evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).  See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also 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).

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

Registration and Use in Bad Faith

 

Complainant also urges that Respondent uses the <skechers-footwear.com> domain name to divert Internet users seeking Complainant’s products to a website that offers competing products.  The Panel finds that this use disrupts Complainant’s business and constitutes evidence that supports findings of bad faith registration and use under a Policy ¶ 4(b)(iii) analysis.  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); 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”).

 

Complainant contends that Respondent is intentionally using the disputed domain name to profit from misleading consumers into believing there is an association between Respondent and Complainant.  As previously discussed, Respondent’s <skechers-footwear.com> domain name is confusingly similar to Complainant’s SKECHERS mark.  Furthermore, the website resolving from the <skechers-footwear.com> domain name prominently displays Complainant’s mark and logo.  The resolving website also imitates Complainant’s official website.  Finally, Complainant attempts to profit from the sale of counterfeit versions of Complainant’s footwear products.  Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users seeking Complainant to Respondent’s own website by creating a likelihood of confusion with Complainant's SKECHERS mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of products on Respondent’s website.  Consequently, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> 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).”); 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 finds that Respondent’s attempt to phish for Internet users’ credit card information and other financial information also supports findings of bad faith under a Policy ¶ 4(a)(iii) analysis.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

The Panel also finds that Respondent’s attempt to pass itself off as Complainant is further evidence that supports findings of bad faith under a Policy ¶ 4(a)(iii) analysis.  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also 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).

 

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).

 

DECISION

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-footwear.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Hon. Carolyn Marks Johnson, Panelist

Dated: November 1, 2010.

 

 

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