Skechers
U.S.A, Inc. and Skechers
Claim Number: FA1004001321723
Complainant is Skechers
U.S.A, Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall A. Lerner, of Kleinberg & Lerner, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cheapdiscountskechers.com>, <skechersshoesdiscount.com>, <skecherssneakerssale.com>, <skechersketcher.com>, and <skechersuk.com>, registered with Xin Net Technology Corporation.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2010. The Complaint was submitted in both Chinese and English.
On April 28, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <cheapdiscountskechers.com>, <skechersshoesdiscount.com>, <skecherssneakerssale.com>, <skechersketcher.com>, and <skechersuk.com> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 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, or billing contacts, and to postmaster@cheapdiscountskechers.com, postmaster@skechersshoesdiscount.com, postmaster@skecherssneakerssale.com, postmaster@skechersketcher.com, and postmaster@skechersuk.com. Also on April 29, 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 May 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 a Written Notice, as defined in Rule 1. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cheapdiscountskechers.com>, <skechersshoesdiscount.com>, <skecherssneakerssale.com>, <skechersketcher.com>, and <skechersuk.com> domain names are confusingly similar to Complainant’s SKECHERS mark.
2. Respondent does not have any rights or legitimate interests in the <cheapdiscountskechers.com>, <skechersshoesdiscount.com>, <skecherssneakerssale.com>, <skechersketcher.com>, and <skechersuk.com> domain names.
3. Respondent registered and used the <cheapdiscountskechers.com>, <skechersshoesdiscount.com>, <skecherssneakerssale.com>, <skechersketcher.com>, and <skechersuk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers U.S.A, Inc. and Skechers
Respondent, Huang Jiao c/o Jiaohuang, registered the <cheapdiscountskechers.com>,
<skechersshoesdiscount.com>, <skecherssneakerssale.com>,
<skechersketcher.com>, and <skechersuk.com> domain
names on January 25, 2010. The <skechersshoesdiscount.com>
domain name resolves to a website that offers counterfeit versions of
Complainant’s shoes and apparel. The
<cheapdiscountskechers.com>, <skecherssneakerssale.com>,
<skechersketcher.com>, and <skechersuk.com> domain
names fail to resolve to an active 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."
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.
The Panel finds that Complainant has established rights in
its SKECHERS mark under Policy ¶ 4(a)(i) through its trademark registration
with China’s SIPO (e.g., Reg. No.
696,968 issued July 7, 1994). See Miller
Brewing
Complainant alleges that Respondent’s <cheapdiscountskechers.com>,
<skechersshoesdiscount.com>, <skecherssneakerssale.com>,
<skechersketcher.com>, and <skechersuk.com> domain
names are confusingly similar to Complainant’s SKECHERS mark. The disputed domain names all incorporate
Complainant’s entire SKECHERS mark and simply add generic and descriptive terms
to the mark. The disputed domain names
also append the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of generic and
descriptive terms, coupled with the addition of a gTLD, fails to relieve the
disputed domain names of their confusing similarity to Complainant’s mark. See Google Inc. v. Xtraplus Corp.,
D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names
were confusingly similar to Complainant’s GOOGLE mark where the respondent
merely added common terms such as “buy” or “gear” to the end); see
also Kohler Co. v. Curley,
FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed
domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); 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 determines that Respondent’s disputed domain names
are confusingly similar to Complainant’s SKECHERS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have any
rights or legitimate interests in the <cheapdiscountskechers.com>,
<skechersshoesdiscount.com>, <skecherssneakerssale.com>,
<skechersketcher.com>, and <skechersuk.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain names. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain names under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l
Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June
27, 2000) (finding it appropriate for the panel to draw adverse inferences from
the respondent’s failure to reply to the complaint).
Respondent has failed to present evidence, and the Panel has
failed to find evidence in the record, that would support a finding that
Respondent is commonly known by the disputed domain names. To the contrary, Complainant has asserted that
Respondent is not licensed or authorized to use Complainant’s SKECHERS mark and
that Respondent is not a retailer of, distributor of, or authorized to sell
Complainant’s products. Moreover, the WHOIS information identifies the
registrant of the disputed domain names as “Huang Jiao c/o Jiaohuang,” which
the Panel determines is not similar to any of the disputed domain names. Consequently, the Panel holds that Respondent
is not commonly known by the <cheapdiscountskechers.com>,
<skechersshoesdiscount.com>, <skecherssneakerssale.com>,
<skechersketcher.com>, and <skechersuk.com> domain
names pursuant to Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence
in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent uses the <skechersshoesdiscount.com>
domain name to resolve to a website that offers counterfeit versions of
Complainant’s shoes and apparel. The
Panel finds Respondent’s use of a confusingly similar disputed domain name for
this purpose does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use of the disputed domain name pursuant to Policy ¶
4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium
Respondent’s <cheapdiscountskechers.com>,
<skecherssneakerssale.com>, <skechersketcher.com>,
and <skechersuk.com> domain names fail to resolve to an active
website. The Panel finds Respondent’s
failure to make an active use of the disputed domain names does not provide
evidence of 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 names under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question);
see also Thermo Electron
Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the
respondent’s non-use of the disputed domain names demonstrates that the
respondent is not using the disputed domain names for a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <skechersshoesdiscount.com>
domain name resolves to a website that features counterfeit versions of
Complainant’s shoes and apparel.
Complainant claims that its business is disrupted as Internet users
interested in purchasing Complainant’s shoes and apparel may instead purchase
counterfeit versions of Complainant’s products from Respondent due to
Respondent’s use of the confusingly similar disputed domain name. This results in a loss of business for
Complainant and also the association of Complainant with a counterfeit version
of its product. The Panel agrees with
Complainant that Respondent’s use of the disputed domain name disrupts
Complainant’s business, and finds this is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS,
FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the
<fossilwatch.com> domain name from the respondent, a watch dealer not
otherwise authorized to sell the complainant’s goods, to the complainant); see also
G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508
(Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX
mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
The Panel presumes
that Respondent profits from the sale of counterfeit versions of Complainant’s
shoes and apparel. Internet users may
become confused as to Complainant’s sponsorship of or affiliation with the
disputed domain name, resolving website, and featured counterfeit products. The inclusion of counterfeit shoe and apparel
products on the resolving website furthers the likelihood of confusion among
Internet users. Respondent is attempting
to profit from this confusion. The Panel
determines that Respondent’s use of the <skechersshoesdiscount.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by
registering the <fossilwatch.com> domain name and using it to sell
various watch brands where the respondent was not authorized to sell the
complainant’s goods); 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).
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii)
analysis, and that it is not limited to the enumerated factors in Policy ¶
4(b). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he
examples [of bad faith] in Paragraph 4(b) are intended to be illustrative,
rather than exclusive.”).
Respondent fails to
make an active use of the <cheapdiscountskechers.com>, <skecherssneakerssale.com>,
<skechersketcher.com>, and <skechersuk.com> domain
names. The Panel concludes that
Respondent’s failure to make an active use of the disputed domain names is
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the
domain name or website that connects with the domain name, and that [failure to
make an active use] of a domain name permits an inference of registration and
use in bad faith); see also Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the
respondent’s decision to passively hold the disputed domain name, “Respondent
has made its intention clear and the continuing threat hanging over the
Complainant’s head constitutes bad faith use”).
The Panel finds
Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <cheapdiscountskechers.com>, <skechersshoesdiscount.com>, <skecherssneakerssale.com>, <skechersketcher.com>, and <skechersuk.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 3, 2010
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