Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Zhi Huang
Claim Number: FA1010001354126
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 Zhi Huang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers-shapeups.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2010; the National Arbitration Forum received payment on October 22, 2010.
On October 25, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skechers-shapeups.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@skechers-shapeups.com. Also on October 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 November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skechers-shapeups.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks.
2. Respondent does not have any rights or legitimate interests in the <skechers-shapeups.com> domain name.
3. Respondent registered and used the <skechers-shapeups.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers U.S.A., Inc. is the parent company of the wholly owned subsidiary, Skechers U.S.A., Inc. II. Based on the well established relationship between the two entities, the Panel elects to treat them as a single entity for the purposes of this proceeding and will refer to them collectively as “Complainant” throughout this decision. Complainant was founded in 1992 and has used its SKECHERS mark since in connection with its popular footwear. More recently, Complainant has used its SHAPE-UPS mark to promote its new line of SHAPE-UPS footwear. Complainant holds numerous trademark registrations for its SKECHERS mark with United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,851,977 issued August 30, 1994) and with State International Property Office (“SIPO”) in the Republic of China (e.g. Reg. No. 696,968 issued July 7, 1994). Complainant also holds a trademark registration for its SHAPE-UPS mark with the USPTO (e.g., Reg. No. 3,732,331 issued December 29, 2009) and SIPO (e.g. Reg. No. 1,376,515 issued September 1, 2009).
Respondent, Zhi Huang, registered the <skechers-shapeups.com> domain name on April 27, 2010. The disputed domain name resolves to a website featuring images of Complainant’s footwear and a layout similar to Complainant’s official website. The resolving website also attempts to sells and promote products in direct competition with Complainant’s footwear business.
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 contends it has established rights in its SKECHERS and SHAPE-UPS marks. Previous panels have found a complainant establishes rights in a mark through its trademark registration with a federal trademark authority. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); 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 holds trademark registrations of its SKECHERS mark with the USPTO (e.g. Reg. No. 1,851,977 issued August 30, 1994) and SIPO (e.g. Reg. No. 696,968 issued July 7, 1994). Complainant holds trademark registrations of its SHAPE-UPS mark with the USPTO (e.g. Reg. No. 3,732,331 issued December 29, 2009) and SIPO (e.g. Reg. No. 1,376,515 issued September 1, 2009). The Panel finds that Complainant has established rights in its SKECHERS and SHAPE-UPS marks through its registration with the USPTO and SIPO pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <skechers-shapeups.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks. The disputed domain name combines two of Complainant’s marks with a hyphen and only differs from Complainant’s mark by the deletion of the hyphen in SHAPE-UPS and the addition of a generic top-level domain name (“gTLD”) “.com.” The Panel finds that combining marks fails to properly distinguish the disputed domain name from Complainant’s 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 also finds that the addition or deletion of a hyphen does not sufficiently differentiate the disputed domain name from Complainant’s mark. 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"). Finally, the Panel finds that the addition of a gTLD does not properly distinguish the disputed domain name from Complainant’s mark. See 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.”). Thus, the Panel concludes that Respondent’s <skechers-shapeups.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant argues that Respondent lacks rights and legitimate interests in the <skechers-shapeups.com> domain name. Complainant has established a prima facie showing in support of its allegations. In, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found that 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.” Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will look to the record to determine whether Respondent has established rights under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <skechers-shapeups.com> domain name. The WHOIS information identifies Respondent as “zhi huang,” which is not similar to the disputed domain name. Complainant alleges that it has not authorized or licensed Respondent to use or register Complainant’s marks in the disputed domain name. The Panel finds no additional evidence that indicates Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <skecher-shapeups.com> domain name under Policy ¶ 4(c)(ii). 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 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).
Respondent’s <skechers-shapeups.com> domain name resolves to a website featuring images of Complainant’s footwear products and a layout similar to Complainant’s official website. Respondent also attempts to sell and promote Complainant’s competitors’ products on the website. The Panel finds that Respondent’s use of the disputed domain name to attempt to pass off its website off as Complainant’s and promote products in direct competition with Complainant’s footwear business 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 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); 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.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent uses the <skechers-shapeups.com> domain name to redirect Internet users to a website that attempts to pass itself off as Complainant’s official website and also offers to sell competitor’s products. Complainant argues that Respondent’s use of the disputed domain name disrupts its business because Internet users intending to purchase footwear from Complainant may instead be directed to Respondent’s website and purchase similar products from a competitor. The Panel finds that Respondent’s use of the disputed domain name does disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii), which is evidence of bad faith use and registration. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
The Panel infers that Respondent likely profits from the use of the <skechers-shapeups.com> domain name. Respondent uses the confusingly similar disputed domain name to operate a website with a similar layout of Complainant’s official website and images of Complainant’s footwear products and attempts to sells products of Complainant’s competitors. Internet users searching for Complainant’s website may instead find Respondent’s website as a result of Respondent’s use of the confusingly similar disputed domain name. Internet users may then become confused as the Complainant’s association with, or sponsorship of, the disputed domain name, resolving website, and products offered. Respondent attempts to profit from this confusion through the sale of competitor’s products. The Panel finds that Respondent’s used of a confusingly similar disputed domain name constitutes bad faith use and registration 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 the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
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-shapeups.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 2, 2010
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