Skechers2010.com, Skechers-shoes-shop.com

The timeline behind skechers2010.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. Yu Ting c/o Yu Ting Claim Number: FA1006001331685 PARTIES Complainant is Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (“Complainant”), represented by Marshall SA. Lerner, of Kleinberg & Lerner, LLP, California, USA. Respondent is Yu Ting c/o Yu Ting (“Respondent”), China. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <skechers2010.com> and <skechers-shoes-shop.com>, registered with BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2010 in both Chinese and English languages. On June 28, 2010, BEIJING INNOVATIVE LINKAGE TECHNOLOGY LTD. d/b/a DNS confirmed by e-mail to the National Arbitration Forum that the <skechers2010.com> and <skechers-shoes-shop.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 July 1, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 21, 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@skechers2010.com and postmaster@skechers-shoes-shop.com by e-mail. Also on July 1, 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 July 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. 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 <skechers2010.com> and <skechers-shoes-shop.com> domain names are confusingly similar to Complainant’s SKECHERS mark. 2. Respondent does not have any rights or legitimate interests in the <skechers2010.com> and <skechers-shoes-shop.com> domain names. 3. Respondent registered and used the <skechers2010.com> and <skechers-shoes-shop.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, is an international designer, manufacturer and distributor of footwear products. Complainant has sold footwear under its SKECHERS mark since 1992 and reached sales of 1.436 billion in 2009. Complainant owns numerous trademark registrations for its SKECHERS mark around the world including: 1. United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,851,977 issued August 30, 1994); 2. China Trademark Office of the State Administration (“SIPO”) (e.g., Reg. No. 1,717,145 issued February 21, 2002); and 3. United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,523,265 issued November 12, 1992). Respondent, Yu Ting c/o Yu Ting, registered the <skechers2010.com> and <skechers-shoes-shop.com> domain names on May 12, 2010 and May 29, 2010 respectively. Respondent’s disputed domain names resolve to a website that uses Complainant’s SKECHERS mark and official website design to market and sell Complainant’s 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. Identical and/or Confusingly Similar The Panel finds that Complainant has sufficiently demonstrated its rights in the SKECHERS mark under Policy ¶ 4(a)(i) through its multiple trademark registrations worldwide. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Respondent’s <skechers2010.com> and <skechers-shoes-shop.com> domain names are confusingly similar to Complainant’s SKECHERS mark under Policy ¶ 4(a)(i). The <skechers2010.com> domain name includes the entire SKECHERS mark, adding only the year of registration “2010” and the generic top-level domain (“gTLD”) “.com.” The <skechers-shoes-shop.com> domain name also contains the entire SKECHERS mark, adding only hyphens and the generic and descriptive terms “shoes” and “shop” with the gTLD “.com.” The Panel finds that Respondent’s <skechers2010.com> and <skechers-shoes-shop.com> domain names are confusingly similar to Complainant’s SKECHERS mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark); see also 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.”). The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant alleges that Respondent does not have rights and legitimate interests in the <skechers2010.com> and <skechers-shoes-shop.com> domain names. Upon Complainant’s production of a prima facie case in support of such allegations the burden of proof shifts to Respondent to demonstrate that it has rights and legitimate interests in the domain names. See 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)); see also 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.”). The Panel finds that Complainant has produced a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names and that the burden of proof has properly shifted to Respondent to produce evidence of its rights and legitimate interests in the domain names. However, due to Respondent’s failure to respond to these proceedings the Panel may presume that Respondent does in fact lack rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). 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.”). However, the Panel will evaluate the evidence on record to determine whether Respondent possesses rights and legitimate interests in the <skechers2010.com> and <skechers-shoes-shop.com> domain names. Complainant contends that Respondent is not a retailer, distributor or authorized seller of SKECHERS brand products. The WHOIS information for the <skechers2010.com> and <skechers-shoes-shop.com> domain names identifies “yu ting” as the registrant, and Respondent has offered no evidence to refute Complainant’s allegations. Therefore, the Panel finds that Respondent is not commonly known by the <skechers2010.com> and <skechers-shoes-shop.com> domain names under 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant submits evidence to show that Respondent’s <skechers2010.com> and <skechers-shoes-shop.com> domain names resolve to a website that appears identical to Complainant’s official <skechers.com> website and purports to sell Complainant’s goods. Complainant alleges that Respondent is attempting to pass itself off as Complainant to collect the personal information of Internet users who were diverted to Respondent’s website. Further, Complainant argues that it has not granted Respondent licensure or authorization to sell its products or to use its marks. The Panel finds that Respondent’s use of the disputed domain names to pass itself off as Complainant as well as to sell Complainant’s goods, or counterfeits thereof, without authorization is not 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent’s disputed domain names resolve to a website that appears identical to Complainant’s official <skechers.com> website in order to sell unauthorized products of Complainant. The Panel presumes that such use of the disputed domain names results in a disruption of Complainant’s online footwear business. Therefore, the Panel finds that Respondent registered and is using the <skechers2010.com> and <skechers-shoes-shop.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See 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).”); see also 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). Respondent is using the disputed domains for Respondent’s commercial gain by either selling unauthorized products of Complainant or by acquiring Internet users’ personal and financial information through Respondent’s website. The Panel finds that Respondent’s registration and use of the disputed domain names was made in bad faith under Policy ¶ 4(b)(iv) where Respondent is attempting to profit from the goodwill and notoriety of Complainant’s SKECHERS mark by diverting Internet users to Respondent’s website that is nearly identical to Complainant’s official website. See 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)”); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”). The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii). 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 <skechers2010.com> and <skechers-shoes-shop.com> domain names be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: August 2, 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.