Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Moses Zheng
Claim Number: FA1105001388961
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 Moses Zheng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shape-ups.us>, registered with GoDaddy.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2011; the Forum received a hard copy of the Complaint on May 26, 2011.
On May 16, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <shape-ups.us> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 26, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 15, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <shape-ups.us> domain name is identical to Complainant’s SHAPE-UPS mark.
2. Respondent does not have any rights or legitimate interests in the <shape-ups.us> domain name.
3. Respondent registered and used the <shape-ups.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II are related companies and the Panel will elect to treat them as a single Complainant for the purpose of this proceeding. Complainant was founded in 1992 and is a worldwide retailer of footwear. Complainant owns the SHAPE-UPS mark, which it uses in connection with its SHAPE-UPS shoes, launched in 2009. Complainant holds a trademark registration for the SHAPE-UPS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,732,331 issued Dec. 29, 2009) and in China with the State Intellectual Property Office (“SIPO”) (Reg. No. 01376515 issued Sept. 1, 2009).
Respondent, Moses Zheng, registered the <shape-ups.us> domain name on April 14, 2010. The disputed domain name resolves to a website which mimics Complainant’s official <skechers.com> website in order to sell counterfeit versions of Complainant’s footwear and/or solicit Internet users’ personal information for illegal purposes.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has established rights in its SHAPE-UPS mark through registration in the United States with the USPTO” (Reg. No. 3,732,331 issued Dec. 29, 2009) and in China with the State Intellectual Property Office (“SIPO”) (Reg. No. 01376515 issued Sept. 1, 2009). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to UDRP ¶ 4(a)(i)); see also 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.”).
Respondent’s <shape-ups.us> domain name is identical to Complainant’s SHAPE-UPS mark. The disputed domain name incorporates the mark entirely and only adds the country-code top level domain (“ccTLD”) “.us.” The Panel finds that the addition of a ccTLD does not add a distinguishing factor to the domain name. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”). The Panel concludes that Respondent’s <shape-ups.us> domain name is identical to Complainant’s SHAPE-UPS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel stated “Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under [UDRP] ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.” Here, Complainant has presented a prima facie showing. Given Respondent’s failure to respond to the Complaint, the Panel is allowed to assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel still elects to examine the record to determine whether Respondent has rights or legitimate interest under Policy ¶ 4(c).
The evidence indicates that Respondent does not own any service marks or trademarks that are reflected in the <shape-ups.us> domain name. Therefore, the Panel determines that Respondent does not have rights and legitimate interests according to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent is not commonly known by the <shape-ups.us> domain name. The WHOIS information identifies Respondent as “moses zheng,” which is not similar to the disputed domain name. Furthermore, Complainant says that it has not authorized Respondent to use its SHAPE-UPS mark within the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <shape-ups.us> domain under Policy ¶ 4(c)(iii). 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 UDRP ¶ 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).
Respondent uses the <shape-ups.us> domain name to host a website which purportedly offers for sale counterfeits versions of Complainant’s footwear. The Panel finds that Respondent’s attempt to use the identical disputed domain name to sell counterfeit goods is not a bona fide offerring of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). 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 [UDRP] ¶ 4(c)(i).”); see also 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 [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”).
Respondent’s <shape-ups.us> domain name resolves to a website which attempts to pass itself off as Complainant’s official <skechers.com> site. The resolving site prominently displays Complainant’s SHAPE-UPS mark and has copied the layout, look and feel, and copyrighted images of Complainant’s official site. The Panel finds that Respondent’s use of the disputed domain name to operate a website which attempts to pass itself off as Complainant in order to sell footwear evidences Respondent’s lack of rights or legitimate interests in the disputed domain name. 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 UDRP ¶ 4(a)(ii)); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).
Complainant also alleges that Respondent perhaps uses the disputed domain name to operate a website which attempts to collect consumers’ personal financial information under the guise of selling shoes, and then does not provide any goods. The Panel finds that Respondent’s use of the disputed domain name to run a phishing scheme to gather the personal financial information of Internet users does not establish rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to UDRP ¶ 4(c)(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).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Respondent registered and is using the <shape-ups.us> domain name in order to disrupt Complainant’s business. Internet users intending to purchase Complainant’s footwear products may find Respondent’s website instead and purchase the counterfeit goods offered on the resolving website as a result. The Panel finds that Respondent’s disputed domain name disrupts Complainant’s footwear business and is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also 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 [UDRP] ¶ 4(b)(iii).”).
Respondent’s <shape-ups.us> domain name redirects Internet users to a website which copies the layout, look and feel, and copyrighted images from Complainant’s official website. Respondent’s attempt to pass itself off as Complainant creates a strong likelihood of confusion as to Complainant’s association with, or sponsorship of, the resolving site and footwear goods offered for sale. Respondent attempts to profit from this confusion by selling the counterfeit footwear products or by collecting the personal financial information of consumers for illicit purposes. The Panel finds that such registration and use constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See 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); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
Finally, Complainant asserts that Respondent may also be using the disputed domain name to operate a phishing scheme to collect the personal financial information of Internet users intending to purchase the footwear offered on the resolving site and then does not provide the goods. The Panel finds that Respondent’s utilization of the <shape-ups.us> domain name to run a phishing scheme constitutes bad faith use and registration according to Policy ¶ 4(a)(iii). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); 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 that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shape-ups.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 1, 2011
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