Fossil, Inc. v. Constramat
Claim Number: FA0802001153564
Complainant is Fossil, Inc. (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fosil.net>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fosil.net> domain name is confusingly similar to Complainant’s FOSSIL mark.
2. Respondent does not have any rights or legitimate interests in the <fosil.net> domain name.
3. Respondent registered and used the <fosil.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells watches, jewelry, fashion accessories and clothing through department store chains, specialty retail stores, and its own branded stores. Complainant markets its products using the FOSSIL mark, which it registered with the United States Patent and Trademark Office (“USPTO”) on December 1, 1987 (Reg. No. 1,467,255) and with the Oficina Española de Patentas y Marcas (Spanish Patent and Trademark Office) on May 6, 1991 (Reg. No. 1,307, 953).
Respondent registered the <fosil.net> domain name on
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.
The Panel finds that, under Policy ¶ 4(a)(i), Complainant has established rights in the FOSSIL mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <fosil.net> domain name is confusingly similar to its FOSSIL mark. The disputed domain name differs from Complainant’s mark in two ways: (1) the letter “S” has been omitted; and (2) the generic top-level-domain (“gTLD”) “.net” has been added. The Panel finds that these two changes do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <fosil.net>
domain name. Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case against Respondent, and then the burden shifts to
Respondent to show evidence that it does have rights and legitimate interests
in the disputed domain name. The Panel
finds that Complainant has made a prima
facie case pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Complainant contends that Respondent is not commonly known
as <fosil.net>. The WHOIS record for the disputed domain name
lists Respondent as “Constramat.”
Because of this evidence, along with Respondent’s failure to present
evidence to the contrary, the Panel concludes that Respondent is not commonly
known as <fosil.net> pursuant
to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA
139720 (Nat. Arb. Forum
Respondent is using the <fosil.net> domain name to imitate Complainant’s website. Respondent is passing itself off as Complainant, and is using Complainant’s mark to exploit Complainant’s customers’ and potential customers’ assumptions that a website at <fosil.net> is affiliated with Complainant, when in fact it is owned by Respondent with no affiliation with Complainant. The Panel finds that this use of the <fosil.net> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The <fosil.net> domain
name is confusingly similar to Complainant’s FOSSIL mark primarily
because it removes an “s” from Complainant’s mark. Respondent’s use of the disputed domain names
constitutes typosquatting since Respondent is attempting to take advantage of a
common typographical error made by Internet users. This further evidences Respondent’s lack of
rights and legitimate interests in the <fosil.net> domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities
LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <fosil.net> domain name in bad faith by making it appear as though the website at that address is actually Complainant’s website. The Panel finds that Respondent’s use of the disputed domain name to pass itself off as Complainant, as well as its failure to provide evidence of any legitimate use of the domain name, is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
In several previous UDRP
cases, Respondent has been found to have engaged in a pattern of conduct of
registering and using domain names to redirect to the complainants’ websites,
and that in each case Respondent was found to have registered and used the
domain names in bad faith. See Banco
Respondent’s disputed domain name slightly misspells Complainant’s
FOSSIL mark. In Dermalogica, Inc. v. Domains to Develop, FA
175201 (Nat. Arb. Forum
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 <fosil.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 3, 2008
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