Skechers
Claim Number: FA1008001341838
Complainant is Skechers
U.S.A., Inc. and Skechers
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <discountshapeup.com>, registered with HICHINA ZHICHENG TECHNOLOGY LTD.
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 August 18, 2010. The Complaint was submitted in both Chinese and English language.
On August 18, 2010, HICHINA ZHICHENG TECHNOLOGY LTD. confirmed by e-mail to the National Arbitration Forum that the <discountshapeup.com> domain name is registered with HICHINA ZHICHENG TECHNOLOGY LTD. and that Respondent is the current registrant of the name. HICHINA ZHICHENG TECHNOLOGY LTD. has verified that Respondent is bound by the HICHINA ZHICHENG TECHNOLOGY LTD. 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 August 20, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 9, 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@discountshapeup.com by e-mail. Also on August 20, 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 September 21, 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 (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <discountshapeup.com> domain name is confusingly similar to Complainant’s SHAPE-UPS mark.
2. Respondent does not have any rights or legitimate interests in the <discountshapeup.com> domain name.
3. Respondent registered and used the <discountshapeup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Skechers
Respondent, Chen Xuebing, registered the disputed domain name on May 11, 2010. The disputed domain name resolves to a website that appears to be identical to Complainant’s official website resolving from its <skechers.com> domain name and sells counterfeit versions of Complainant’s footwear products as well as footwear products of Complainant’s competitors.
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 asserts rights in its SHAPE-UPS mark based on
its registration of the same with the USPTO (Reg. No. 3,732,331 issued December
29, 2009). Previous panels have
concluded that a trademark registration with the USPTO is sufficient to
establish a complainant’s rights in a mark regardless of whether a respondent
resides or operates outside the
Complainant argues that Respondent’s <discountshapeup.com>
domain name is confusingly similar
to Complainant’s SHAPE-UPS mark. The
disputed domain name eliminates the hyphen and the letter “s” from
Complainant’s mark while adding the generic term “discount” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the elimination of a hyphen and a single letter do not
sufficiently distinguish the disputed domain name from Complainant’s mark. See
Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding
that the domain name <cspan.net>, which omitted the hyphen from the
trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its allegations and Respondent has failed to submit a Response to these proceedings. See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Nevertheless, the Panel will examine the record in light of the factors outlined in Policy ¶ 4(c) to determine whether Respondent has any rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent is not commonly known by
the disputed domain name. The WHOIS
information lists “Chen Xuebing” as the registrant of the disputed domain
name. Without evidence in the record to
the contrary, the Panel finds that Respondent lacks rights and legitimate
interests in the <discountshapeup.com> domain name under Policy ¶
4(c)(ii). See 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); see also
Complainant states that Respondent’s disputed domain name
resolves to a website that appears to be nearly identical to Complainant’s
official website resolving from its <skechers.com> domain name. Complainant alleges that Respondent’s website
uses images and pictures from Complainant’s official website and also copied
the layout, designs, fonts, and other distinctive aspects of Complainant’s
official website. Complainant further
alleges that Respondent also features counterfeit versions of many of Complainant’s
footwear products on the resolving websites.
Complainant also indicates that Respondent also offers goods of
Complainant’s competitors for sale on the resolving website. The Panel may find that Respondent is
attempting to pass itself off as Complainant and as such is not using the
disputed domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Kmart of
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant indicates that Respondent’s disputed domain name resolves to a website featuring the products of Complainant’s competitors in the footwear industry. Complainant also alleges that Respondent’s resolving website features counterfeit versions of Complainant’s footwear for sale. The Panel finds that Internet users seeking to purchase Complainant’s footwear products may instead purchase counterfeit versions of Complainant’s footwear or footwear from Complainant’s competitors thus disrupting Complainant’s business. Thus, the Panel finds Respondent has registered and used the disputed domain in bad faith under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
The Panel finds that Respondent’s registration and use of
the confusingly similar disputed domain name to attract Complainant’s
prospective customers and redirect them to Respondent’s website offering
competing footwear products for sale is evidence of Respondent’s bad faith
pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel also finds that Respondent’s
attempt to pass itself off as Complainant by including images and pictures from
Complainant’s official website is additional evidence of Respondent’s bad
faith. 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).”).
The Panel finds that Complainant has satisfied 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 <discountshapeup.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 23, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum