Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. insdfsdfasdf / sdfsdfsdf laidsf
Claim Number: FA1108001401661
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 linsdfsdfasdf / sdfsdfsdf laidsf (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechersup.com>, registered with Jiangsu Bangning Science & Technology CO,. LTD.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2011; the National Arbitration Forum received payment on August 3, 2011. The Complaint was submitted in both Chinese and English.
On August 4, 2011, Jiangsu Bangning Science & Technology CO,. LTD confirmed by e-mail to the National Arbitration Forum that the <skechersup.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 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 August 4, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 24, 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@skechersup.com. Also on August 4, 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 August 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <skechersup.com> domain name is confusingly similar to Complainant’s SKECHERS mark.
2. Respondent does not have any rights or legitimate interests in the <skechersup.com> domain name.
3. Respondent registered and used the <skechersup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant began selling footwear in 1992 under the SKECHERS mark. Complainant registered the SKECHERS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,851,977 registered August 30, 1994) and with China’s State Intellectual Property Office (“SIPO”) (Reg. 696,968 registered July 7, 2004).
Respondent registered the <skechersup.com> domain name on March 28, 2011. The disputed domain name resolves to a website that sells Complainant’s footwear products without authorization from Complainant.
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 provides evidence of trademark registrations with the USPTO and SIPO as proof of Complainant’s rights in the SKECHERS mark. The Panel finds that this is sufficient to prove Complainant’s rights for purposes of Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), where the panels found that a national trademark registration is sufficient to establish rights in a mark.
Respondent’s <skechersup.com> domain name is confusingly similar to Complainant’s SKECHERS mark. Complainant also provides evidence of Complainant’s SHAPE-UPS shoe brand. The Panel determines that the disputed domain name contains Complainant’s entire SKECHERS mark and simply adds the descriptive term “up,” which references Complainant’s footwear, along with the gTLD “.com.” In Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), and Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panels concluded that the addition of a descriptive term is insufficient to differentiate a domain name from a complainant’s mark. Similarly, in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), and Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panels found that the addition of a generic top-level domain (“gTLD”) is irrelevant to a Policy ¶ 4(a)(i) analysis. Similarly, the Panel concludes that Respondent’s <skechersup.com> domain name is confusingly similar to Complainant’s SKECHERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <skechersup.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). In this case, the Panel finds Complainant made a sufficient prima facie case. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), the panel held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. However, this Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <skechersup.com> domain name. Complainant points out the WHOIS information, which identifies the domain name registrant as “linsdfsdfasdf sdfsdfsdf lasidsf,” does not indicate that Respondent is known by the disputed domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panels found that a respondent was not commonly known by a disputed domain name if the WHOIS information and the evidence in the record did not support such a conclusion. Absent any contradicting arguments from Respondent, the Panel determines that Respondent is not commonly known by the <skechersup.com> domain name for purposes of Policy ¶ 4(c)(ii).
Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <skechersup.com> domain name. According to Complainant, Respondent’s <skechersup.com> domain name resolves to a website that sells Complainant’s footwear products without authorization from Complainant. Complainant claims that Respondent’s website appears similar to Complainant’s official website in an attempt to pass off the website as Complainant’s website. In Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), and Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000), the panels found that the use of a disputed domain name for the unauthorized sale of a complainant’s products was neither a bona fide offering of goods or services under nor a legitimate noncommercial or fair use of a disputed domain name. Similarly, in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), and Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), the panels concluded that a respondent’s attempt to pass itself off as a complainant was also evidence that a respondent lacked rights and legitimate interests. The Panel accordingly finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <skechersup.com> domain name.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides screen shots of the website resolving from the <skechersup.com> domain name which show that Respondent is attempting to sell Complainant’s footwear products. According to Complainant, this sale is unauthorized, constituting bad faith under Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), where the panels found that the unauthorized sale of a complainant’s goods disrupts a complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).
Respondent is attempting to commercially benefit by creating confusion as to Complainant’s affiliation with the disputed domain name. The screen shot of the <skechersup.com> domain name provided by Complainant reveals Complainant’s SKECHERS mark clearly posted at the top of the website and Complainant’s shoes are advertised and sold on the remaining portions of the website. In Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000), the panels held that a respondent’s attempt to sell a complainant’s products was evidence of bad faith registration and use under Policy ¶ 4(b)(iv). The Panel finds that Respondent’s registration and use of the <skechersup.com> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
As Respondent is using the confusingly similar <skechersup.com> domain name to host a website bearing Complainant’s SKECHERS mark to sell Complainant’s shoes, the Panel concludes that Respondent is attempting to pass itself off as Complainant and, therefore, has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000), and Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), where the panels determined that a respondent’s attempt to pass itself off as a complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechersup.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 6, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page