Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. chen xinyi
Claim Number: FA1101001367042
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 chen xinyi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechershape-up.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 January 11, 2011; the National Arbitration Forum received payment January 11, 2011. The Complaint was submitted in both Chinese and English.
On January 12, 2011, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <skechershape-up.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 7, 2011, 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@skechershape-up.com. Also on January 17, 2011, 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 February 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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 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 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.
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, <skechershape-up.com> , is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks.
2. Respondent has no rights to or legitimate interests in the <skechershape-up.com> domain name.
3. Respondent registered and used the <skechershape-up.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. Hereinafter, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. will be collectively referred to as “Complainant.” Complainant uses the SKECHERS and SHAPE-UPS marks in connection with footwear and apparel. 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. 696,968 issued July 7, 1994). In addition, Complainant holds a trademark registration with the USPTO for the SHAPE-UPS mark (e.g., Reg. No. 3,732,331 issued December 29, 2009).
Respondent, chen xinyi, registered the <skechershape-up.com> domain name May 11, 2010. The disputed domain name resolves to a website that offers for sale counterfeit versions of Complainant’s goods. The resolving website also attempts to pass itself off as Complainant’s official website.
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 claims 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) and China’s SIPO (e.g., Reg. No. 696,968 issued July 7, 1994). Complainant also claims rights in the SHAPE-UPS mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,732,331 issued December 29, 2009). The Panel finds that these trademark registrations sufficiently prove Complainant’s legal rights in the SKECHERS and SHAPE-UPS marks under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) 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). The Panel also finds that it is irrelevant whether Complainant holds trademark registrations for the SHAPE-UPS mark with the trademark authority in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant asserts that Respondent’s <skechershape-up.com> domain name is identical to and confusingly similar to its marks. Complainant contends that Respondent essentially combines its SKECHERS and SHAPE-UPS marks in the disputed domain name. Respondent fully incorporates Complainant’s SKECHERS mark in the disputed domain name. Respondent also incorporates the majority of Complainant’s SHAPE-UPS mark, merely omitting the second letter “s” from Complainant’s mark. Finally, Respondent attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel finds that omitting a letter from a mark and attaching a gTLD to a mark do not sufficiently distinguish a domain name from the mark. 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); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); 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).
Therefore, the Panel holds that Respondent’s <skechershape-up.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks under Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶
4(a)(i).
Complainant must first make a prima facie case showing that Respondent lacks rights and legitimate interests in the <skechershape-up.com> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove that it does have such rights to or legitimate interests in the disputed domain name. The Panel is permitted to view the Respondent’s failure to submit a Response as evidence that Respondent lacks rights and legitimate interests. 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 asserts that it has not authorized or licensed Respondent to use any of its marks in a domain name. Moreover, the WHOIS information lists “chen xinyi” as the registrant of the disputed domain name, which the Panel finds is not similar to the <skechershape-up.com> domain name. Accordingly, based on Complainant’s assertion and the WHOIS registrant information, the Panel finds that Respondent is not commonly known by the <skechershape-up.com> domain name under Policy ¶ 4(c)(ii). 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 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).
Complainant also urges that Respondent’s resolving website offers for sale counterfeit versions of Complainant’s products. A screen shot of the resolving website shows images of Complainant’s footwear and captions like “Sketchers Shape Ups - Enhancers-White.” Complainant also contends that Respondent’s resolving website offers for sale footwear that competes with Complainant’s footwear. The Panel finds that Respondent uses the disputed domain name to offer for sale counterfeit versions of Complainant’s products as well as products that compete with Complainant. Accordingly, the Panel holds that Respondent does not use the <skechershape-up.com> domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also 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).”).
Furthermore, Complainant claims that Respondent replicates images from Complainant’s official <skechers.com> website so as to appear to be Complainant’s official website. In addition, Complainant claims that Respondent copied the layout, designs, fonts, and pictures from Complainant’s <skechers.com> website. Based on the evidence in the record, the Panel finds that Respondent uses the <skechershape-up.com> domain name in an attempt to pass itself off as Complainant. Therefore, the Panel finds that this behavior provides additional evidence that Respondent does not use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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 Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to 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 Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <skechershape-up.com> domain name to divert Internet users seeking Complainant’s footwear to Respondent’s competing website. Therefore, the Panel finds that Respondent’s domain name disrupts Complainant’s business and that such use 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 also urges that Respondent is using the disputed domain name to offer for sale counterfeit versions of Complainant’s goods. As previously discussed, the Panel finds that Respondent’s <skechershape-up.com> domain name is confusingly similar to Complainant’s SKECHERS and SHAPE-UPS marks. Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s site. Consequently, the Panel holds that this behavior provides further evidence of Respondent’s bad faith registration and use pursuant to 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 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).
Finally, Complainant claims that Respondent is using the disputed domain names to pass itself off as being associated with Complainant. The Panel finds that this use also supports a finding of bad faith under Policy ¶ 4(a)(iii). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechershape-up.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 1, 2011.
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