Skechersdiscount.com, Skechersbrand.com, Skechersshoesonline.com

The timeline behind skechersdiscount.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Hannan and Maxine and Annie Claim Number: FA1001001305260 PARTIES Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marchall A. Lerner, of Kleinberg & Lerner, LLP, California, USA. Respondent is Hannan and Maxine and Annie (“Respondent”), USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns. PANEL 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. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 28, 2010. On February 5, 2010, Beijing Innovative Linkage Technology Ltd. d/b/a Dns confirmed by e-mail to the National Arbitration Forum that the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names are registered with Beijing Innovative Linkage Technology Ltd. d/b/a Dns and that Respondent is the current registrant of the names. Beijing Innovative Linkage Technology Ltd. d/b/a Dns has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a Dns 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 February 9, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@skechersdiscount.com, postmaster@skechersbrand.com, and postmaster@skechersshoesonline.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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." 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names are confusingly similar to Complainant’s SKECHERS mark. 2. Respondent does not have any rights or legitimate interests in the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names. 3. Respondent registered and used the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II, was founded in 1992. Complainant designs, markets, and sells different types of footwear. Complainant markets and sells its footwear products under its SKECHERS mark. Complainant holds multiple trademark registrations for its SKECHERS mark (e.g., Reg. No. 1,851,977 issued August 30, 1994). Respondent registered the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names no earlier than June 4, 2009. The disputed domain names resolve to websites using Complainant’s marks and images that also contain hyperlinks to websites offering to sell Complainant’s competitors’ footwear products. DISCUSSION 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. Preliminary Issue: Multiple Respondents In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” All three disputed domain names are registered with the same registrar, Beijing Innovative Linkage Technology Ltd. d/b/a Dns. The contact information, provided on the websites resolving from the disputed domain names, listed the same phone number and e-mail address. The layouts of each disputed domain name were nearly identical. The WHOIS information includes similar addresses for each disputed domain name, including the state abbreviation “WG,” which does not refer to an actual state. For those reasons, the Panel finds that the disputed domain names were registered and are controlled by the same entity. Identical and/or Confusingly Similar Respondent registered the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names no earlier than June 4, 2009. The Panel finds Complainant has established rights under Policy ¶ 4(a)(i) in the SKECHERS mark through its registrations of the mark with the ("USPTO") (e.g., Reg. No. 1,851,977 issued August 30, 1994). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant alleges that Respondent’s <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names are confusingly similar to Complainant’s SKECHERS mark. The disputed domain names include Complainant’s entire mark and simply add generic terms, such as “discount,” “brand,” and “online,” a descriptive term “shoes,” and a generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of generic and descriptive terms, as well as the addition of a gTLD, is insufficient to adequately distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel concludes that Respondent’s <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names are confusingly similar to Complainant’s SKECHERS mark pursuant to Policy ¶ 4(a)(i). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant has alleged that Respondent does not have any rights or legitimate interests in the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names. Complainant asserts that Respondent is not authorized to use the SKECHERS mark. The WHOIS information identifying the domain name registrant does not provide any evidence that Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent has not established rights or legitimate interests in the disputed 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Respondent uses the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names to resolve to websites containing Complainant’s marks and images. These website also feature hyperlinks to Complainant’s competitors’ footwear products. The Panel finds this use of the confusingly similar disputed domain names is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent’s <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names resolve to websites featuring hyperlinks relating to Complainant’s competitors in the footwear products business. Complainant claims that Respondent’s use of the disputed domain names disrupts Complainant’s footwear business because Internet users looking to buy footwear products from Complainant may be redirected to Complainant’s competitors through Respondent’s confusingly similar websites. The Panel finds Respondent’s use of the disputed domain names does disrupt Complainant’s business and constitutes bad faith registration and use pursuant to Policy 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). The Panel infers Respondent receives click-through fees from the links relating to Complainant’s footwear product competitors. Internet users may become confused as to Complainant’s affiliation with and sponsorship of the competing hyperlinks and website resolving from the disputed domain names. The Panel finds Respondent’s receipt of click-through fees constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <skechersdiscount.com>, <skechersbrand.com>, and <skechersshoesonline.com> domain names be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: March 18, 2010 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.