Skechers
Claim Number: FA1004001322298
Complainant is Skechers U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 29, 2010. The Complaint was submitted in both the Chinese and English languages.
On May 4, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.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 May 7, 2010, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 27, 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@sketchershoe.com, postmaster@sketchersshoessale.com and postmaster@sketchersuk.com by e-mail. Also on May 7, 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 June 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 "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 <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names are confusingly similar to Complainant’s SKECHERS mark.
2. Respondent does not have any rights or legitimate interests in the <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names.
3. Respondent registered and used the <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers
Respondent, Huang Jiao c/o Jiahuang, registered the <sketchershoe.com> and <sketchersshoessale.com> domain names on January 25, 2010, and the <sketchersuk.com> domain name on February 1, 2010. Respondent’s <sketchersshoessale.com> domain name resolves to a website that offers Complainant’s products for sale. Respondent’s <sketchershoe.com> and <sketchersuk.com> domain names do not resolve to active websites.
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 has submitted evidence showing that is owns several trademark registrations with the USPTO (e.g., Reg. No. 1,851,977 issued August 30, 1994) and CTPO (Reg. No. 696,968 issued July 7, 2004) for its SKECHERS mark. The Panel finds that Complainant has established rights in its SKECHERS mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and CTPO. 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 Policy ¶ 4(a)(i)); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <sketchershoe.com>, <sketchersshoessale.com>
and <sketchersuk.com> domain names are confusingly similar
to Complainant’s SKECHERS mark.
Complainant notes that each disputed domain name contains a misspelled
version of Complainant’s mark by adding the letter “t” to its mark. Complainant further notes that each disputed
domain name contains descriptive or generic terms or a geographic term and the
generic top-level domain name (“gTLD”) “.com.” Complainant argues that these changes and
additions to its mark are not sufficient to render the disputed domain names
distinct from Complainant’s mark. The
Panel agrees, and finds that Respondent’s disputed domain names are confusingly
similar to Complainant’s SKECHERS mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4,
2004) (“The mere addition of a single
letter to the complainant’s mark does not remove the respondent’s domain names
from the realm of confusing similarity in relation to the complainant’s mark
pursuant to Policy ¶ 4(a)(i).”); see also
Disney Enters. Inc. v. McSherry, FA 154589 (Nat.
Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see
also Space Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also InfoSpace, Inc. v. domains Asia
Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (“Internet users may
believe that the website located at the <dogpileuk.com> domain name is
run by a
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant maintains that Respondent does not have rights and legitimate interests in the <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show it has rights or legitimate interests in the disputed domain names. 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. See 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.”); see also 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, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is not a retailer, distributor or authorized seller of Complainant’s products, and that Respondent is not commonly known by the disputed domain names. The WHOIS registration information for the disputed domain names identifies “Huang Jiao” as the registrant, and Respondent offers no evidence to counter Complainant’s argument that it is not commonly known by the <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is using the <sketchersshoessale.com> domain name to sell
unauthorized footwear products of Complainant.
Complainant argues that this type of use is evidence that Respondent
lacks rights and legitimate interests in the <sketchersshoessale.com>
domain name because Respondent is attempting to pass itself off as Complainant. The Panel finds that Respondent’s use of the <sketchersshoessale.com>
domain name to market and sell Complainant’s products without authorization is
not a use in connection with 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).
Complainant
also alleges that Respondent has not connected the <sketchershoe.com>
and <sketchersuk.com> domain names to active websites.
Complainant contends that a passive holding of the disputed domain names
is evidence that Respondent lacks rights and legitimate interests in the
disputed domain names. The Panel finds
that Respondent’s failure to make an active use of the disputed domain names,
or to submit evidence of its preparations to do so, is not a use in connection
with a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Apr. 12, 2007) (finding that the respondent lacked rights or legitimate
interests in a confusingly similar domain name that it had not made
demonstrable preparations to use since its registration seven months prior to
the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that the respondent had no rights or legitimate interests in a
domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed
to make any active use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisifed.
Complainant contends that Respondent’s registration of three
trademark infringing disputed domain names in a short period of time is
evidence of bad faith registration and use.
Previous panels have determined that multiple trademark infringing
domain name registrations have been sufficient to find that Respondent has registered
the disputed domain names in bad faith under Policy ¶ 4(b)(ii),
and so this Panel finds. See EPA European Pressphoto Agency
B.V. v.
Complainant argues that Respondent’s registration and use of the <sketchersshoessale.com> domain name was done in bad faith because Respondent is using the disputed domain name to sell Complainant’s goods without authorization. Complainant argues that this type of use results in a loss of business for Complainant and Complainant’s authorized sellers. The Panel agrees and finds that Respondent’s use of the <sketchersshoessale.com> domain name to market and sell the products of Complainant without authorization is evidence that Respodent registered and used the disputed domain name in bad faith under 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).”).
Complainant further argues that Respondent is using the <sketchersshoessale.com> domain name to
intentionally attract Internet users to its website for financial gain, and
that this use is further evidence of Respondent’s bad faith registration and
use. The Panel finds that Respondent’s
use of the disputed domain name to sell Complainant’s goods, without authorization,
while operating under a confusingly similar domain name is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of
the <compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the
source, sponsorship, or affiliation of the website and constituted bad faith
pursuant to Policy ¶ 4(b)(iv)”).
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b), but to the totality of the circumstances. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant also contends that Respondent has failed to make an active use of the <sketchershoe.com> and <sketchersuk.com> domain names, and that such failure is evidence of bad faith registration and use. The Panel finds that Respondent’s failure to make an active use of the disputed domain names, or to submit evidence of its preparations of such use, is evidence that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that 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 <sketchershoe.com>, <sketchersshoessale.com> and <sketchersuk.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 7, 2010
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