Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. lin yanxiao
Claim Number: FA1605001674758
Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II ("Complainant"), represented by Marshall A. Lerner of Kleinberg & Lerner, LLP, United States of America. Respondent is lin yanxiao ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skechers.co>, registered with Name.com, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2016; the Forum received payment on May 12, 2016.
On May 13, 2016, Name.com, Inc. confirmed by email to the Forum that the <skechers.co> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 May 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@skechers.co. Also on May 16, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant sells footwear under the SKECHERS mark in more than 120 countries and territories worldwide. Complainant holds numerous registrations for the mark, including United States and China registrations issued in 1994.
The disputed domain name <skechers.co> was registered in 2010. Complainant states that Respondent is not commonly known by the disputed domain name, is not an authorized retailer or distributor of Complainant's products, and is not authorized to use the name or SKECHERS mark. Complainant states further that the disputed domain name redirects to various commercial websites, including <target.com> and <jcpenney.com>.
On these grounds Complainant contends that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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."
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.
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(f), 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 (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.").
The disputed domain name corresponds exactly to Complainant's registered SKECHERS mark, but for the addition of the ".co" top-level domain. That addition is insufficient to distinguish the domain name from Complainant's mark. See, e.g., Publix Asset Management Co. v. Lin Yanxiao, DCO2015-0033 (WIPO Nov. 24, 2015) (finding <publix.co> identical to PUBLIX); Enterprise Holdings, Inc. v. Paulette Hicks, FA 1556341 (Nat. Arb. Forum May 21, 2014) (finding <eenterprise.co> identical or confusingly similar to E ENTERPRISE). The Panel finds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's mark, and is being used to redirect Internet visitors to various commercial websites, presumably generating referral fees for Respondent. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(ii) of the Policy, bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name is being used to redirect Internet users to various third-party retailers' websites, presumably for Respondent's commercial gain. Under the circumstances the Panel infers that the domain name was registered for this purpose. Respondent's conduct, therefore, is indicative of bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv).
In addition, the Panel notes that Respondent has been found to have registered domain names in bad faith in numerous prior proceedings under the Policy, and finds that the present case is part of a pattern of bad faith registrations under paragraph 4(b)(ii). See, e.g., Europcar International S.A.S.U. v. Lin Yanxiao, D2016-0224 (WIPO Mar. 24, 2016); Navy Federal Credit Union v. Lin Yanxiao, FA 1663282 (Forum Mar. 24, 2016); Wikimedia Foundation, Inc. v. Lin Yanxiao, D2015-2032 (WIPO Jan. 6, 2016); CVS Pharmacy, Inc. v. Linyanxiao, D2015-1839 (WIPO Dec. 13, 2015); Publix Asset Management Co. v. Lin Yanxiao, supra; Michael Kors (Switzerland) International Gmbh c. Lin Yanxiao, DES2015-0017 (WIPO July 22, 2015); and many others; see also Staples, Inc. v. Lin Yanxiao, FA 1617686 (Forum June 4, 2015) (finding bad faith under paragraphs 4(b)(i) and 4(b)(iv) and noting prior decisions adverse to Respondent, but declining to find bad faith under paragraph 4(b)(ii) because Respondent's typosquatting registration of <stapeles.com> did not prevent Complainant from reflecting its mark in the correctly spelled <staples.com>).
Accordingly, the Panel finds that the disputed domain name was registered and has been used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skechers.co> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 10, 2016
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