national arbitration forum

 

DECISION

 

Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. XuCong / Cong Xu / CongXu / XuCong

Claim Number: FA1010001351523

 

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 XuCong / Cong Xu / CongXu / XuCong ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <shape-upsskechers.com>, <skechersshape-upsshoes.com>, and <skecherssale.org>, registered with Jiangsu Bangning Science & Technology Co. 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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2010; the National Arbitration Forum received payment on October 11, 2010.  The Complaint was submitted in both Chinese and English.

 

On October 15, 2010, Jiangsu Bangning Science & Technology Co. Ltd confirmed by e-mail to the National Arbitration Forum that the <shape-upsskechers.com>, <skechersshape-upsshoes.com>, and <skecherssale.org> domain names are registered with Jiangsu Bangning Science & Technology Co. Ltd and that Respondent is the current registrant of the names.  Jiangsu Bangning Science & Technology Co. Ltd has verified that Respondent is bound by the Jiangsu Bangning Science & Technology Co. Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 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 November 4, 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@shape-upsskechers.com, postmaster@skechersshape-upsshoes.com, and postmaster@skechers-sale.org.  Also on October 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 November 11, 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 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.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant sells footwear, including SHAPE-UPS shoes, in retail stores and online at its <skechers.com> domain name. 

 

Complainant owns trademark registrations for the SKECHERS mark, which are filed with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,851,977, issued August 30, 1994), and with the State Intellectual Property Office of the People’s Republic of China (“SIPO”) (including Reg. No. 696,968,   issued July 7, 1994).

Complainant also owns trademark registrations for the SHAPE-UPS mark, also filed with the USPTO, along with the national trademark authorities of other countries (including USPTO Reg. No. 3,732,331, issued December 29, 2009).

 

Respondent registered the <skecherssale.org> domain name on April 7, 2010 and the <shape-upsskechers.com> and <skechersshape-upsshoes.com> domain names on April 13, 2010. 

 

The disputed domain names resolve to the same website, which offers for sale both Complainant’s footwear and competing footwear and uses images taken from Complainant’s official site to attempt to pass itself off as Complainant.

 

Respondent’s <shape-upsskechers.com>, <skechersshape-upsshoes.com>, and <skecherssale.org> domain names are confusingly similar to Complainant’s SKECHERS mark.

 

Respondent is not a retailer or distributor of Complainant and is not authorized to sell Complainant’s products. 

 

Respondent does not have any rights to or legitimate interests in any of the disputed <shape-upsskechers.com>, <skechersshape-upsshoes.com>, and <skecherssale.org> domain names.

 

Respondent registered and uses the <shape-upsskechers.com>, <skechersshape-upsshoes.com>, and <skecherssale.org> domain names in bad faith.

 

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

 

FINDINGS

(1)   the domain names registered by Respondent are 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 names; and

(3)   the domain name were registered and are being used by Respondent in bad faith.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for the SKECHERS mark, including with the USPTO and the SIPO.  Complainant also owns trademark registrations for the SHAPE-UPS mark with the USPTO, along with other countries’ trademark authorities.  It has therefore established rights in the SKECHERS and SHAPE-UPS marks 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding that a complainant’s registrations for its HONEYWELL mark throughout the world were sufficient to establish its rights in the mark under the Policy ¶ 4(a)(i)).

Respondent’s <skecherssale.org>, <shape-upsskechers.com>, and <skechersshape-upsshoes.com> domain names are all confusingly similar to Complainant’s SKECHERS mark because all of the disputed domain names include the mark in its entirety.  Additionally, the disputed domain names combine Complainant’s SKECHERS mark with one or more of the following: the generic term “sales”; the descriptive term “shoes”; Complainant’s other mark, SHAPE-UPS; and either the “.org” or “.com” generic top-level domain (“gTLD”).  Adding a generic or descriptive term like “sale” or “shoes” fails to remove the disputed domain names from the realm of confusing similarity.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of a complainant combined with a generic word or term);  see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the mark).   Likewise, combining two of Complainant’s marks in a single domain name does not distinguish the domain names from either of the individual marks.  See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where a respondent combined a complainant’s POKEMON and PIKACHU marks to form the domain name <pokemonpikachu.com>).  Finally, attaching a gTLD to a mark in forming a domain name has no effect on 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 finds that Respondent’s domain names <skecherssale.org>, <shape-upsskechers.com>, and <skechersshape-upsshoes.com> are confusingly similar to Complainant’s SKECHERS mark for purposes of Policy ¶ 4(a)(i).

            Rights or Legitimate Interests

 

In order to satisfy Policy ¶ 4(a)(ii) on the point of whether Respondent lacks rights to and legitimate interests in the disputed domain names, Complainant must present a sufficient prima facie case.  Once this is done, the burden shifts to Respondent to show that it has such rights or interests.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights to or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

Complainant has adequately satisfied this burden, while Respondent has failed to submit a Response.  We are therefore free to conclude that Respondent has not demonstrated that has rights to or legitimate interests in the contested domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights to or legitimate interests in a contested domain name where a respondent fails to respond). 

 

However, we elect to examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.

 

We begin by noting that Complainant argues, and Respondent does not deny, that Respondent is not a retailer or distributor of Complainant and is not authorized to sell Complainant’s products.  Moreover, the WHOIS information for the disputed domain names lists the registrant only as “XuCong / Cong Xu / CongXu / XuCong,” which does not resemble any of the contested domain names.  On this record, we must conclude that Respondent is not commonly known by the disputed domain names so as to have established that it has rights to or legitimate interests in the disputed domains under Policy ¶ 4(c)(ii).  See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that a respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, where that respondent did not counter this argument in its response); 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 as there was no evidence in the record showing that that respondent was commonly known by that domain name, including the WHOIS information, 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 contends, without objection from Respondent, that Respondent’s <skecherssale.org>, <shape-upsskechers.com>, and <skechersshape-upsshoes.com> domain names all resolve to the same website, and that this website offers for sale products both of Complainant and of Complainant’s commercial competitors.  Respondent’s use of Complainant’s mark in a domain name to redirect Complainant’s customers to a website where they are invited to purchase competing products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use or ¶ 4(c)(iii).  See 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).

 

Finally under this head of the Complaint, it is undisputed that Respondent’s website makes use of Complainant’s SKECHERS and SHAPE-UPS marks, as well as of advertising and product images from Complainant’s official website at the <skechers.com> domain name.  Respondent is thus attempting to pass itself off as Complainant.  And, in the circumstances here presented, it is evident that Respondent receives click-through or similar fees owing to the visits of Internet users to the resolving website. This is evidence that Respondent does not have rights to or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempts to pass itself off online as a complainant, in a blatant unauthorized use of that complainant’s mark, is evidence that that respondent has no rights to or legitimate interests in a disputed domain name);  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).

 

The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s <skecherssale.org>, <shape-upsskechers.com>, and <skechersshape-upsshoes.com> domain names resolve to a website that markets both Complainant’s and Complainant’s competitors’ footwear.  This use of the disputed domain name disrupts Complainant’s business and stands as evidence that Respondent has both registered and uses the contested domain names in bad faith under Policy ¶ 4(b)(iii).  See, for example, 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that a respondent registered and used the domain name <classicmetalroofing.com> in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to that respondent’s competing website).

 

Respondent uses the <skecherssale.org>, <shape-upsskechers.com>, and <skechersshape-upsshoes.com> domain names to direct Internet users to Respondent’s commercial website selling footwear both of Complainant and of Complainant’s competitors.  The use of Complainant’s marks in this manner to attract Complainant’s customers and to create confusion as to the sponsorship of Respondent’s website, all for Respondent’s financial gain.  These activities reveal Respondent’s bad faith registration and use of the domains under Policy ¶ 4(b)(iv).  See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where a respondent used the <dellcomputerssuck.com> domain name to divert Internet users to that respondent’s website offering competing computer products and services); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that a respondent’s use of a disputed domain name to advertise car dealerships that competed with a complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, which was evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iv)).

 

For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

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 <shape-upsskechers.com>, <skechersshape-upsshoes.com>, and <skecherssale.org> domain names be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  November 26, 2010

 

 

 

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