Fossil, Inc. v. An Victor
Claim Number: FA0809001226993
PARTIES
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 <fossi.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 30, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 1, 2008.
On October 7, 2008, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <fossi.com> domain name
is registered with Moniker Online Services, Inc.
and that the Respondent is the current registrant of the name. Moniker Online
Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 October 9, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 29, 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 postmaster@fossi.com by e-mail.
A timely Response was received and determined to be complete on October 29, 2008.
An Additional Submission was received from Complainant on October 31,
2008, which was determined to be timely and complete under the National Arbitration
Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on November 4,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
On November 4, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Anne M. Wallace, Q.C. as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant submitted the following Complaint:
Fossil is the owner of numerous proprietary marks used in connection
with watches, jewelry, fashion accessories, and clothing as well as retail
stores featuring watches, jewelry, fashion accessories and clothing and other
related goods and services.
Specifically, Fossil is the owner of numerous registrations for the
trademark “FOSSIL” and marks containing “FOSSIL” (collectively, the “FOSSIL
Marks”) on the Principal Register of the United States Patent and Trademark
Office and in jurisdictions throughout the world. Of particular relevance to this proceeding
are: (a) U.S. Registration No. 1,467,255, for the mark FOSSIL, registered in
1987 for use on watches; (b) U.S. Registration No. 1,582,547 for the mark
FOSSIL, registered in February of 1990 for use on handbags and other leather
goods; (c) U.S. Registration No. 1,559,950 for the mark FOSSIL, registered in
October of 1989 for use on clothing. These registrations were originally
obtained in the name of Overseas Products International, Inc., which later
changed its name to Fossil, Inc.
The “FOSSIL” mark was first used by Fossil in commerce at least as
early as 1985, was continuously used thereafter, and is still in use in the
In addition to its retail stores, Fossil generates significant revenue
from sales through the Complainant’s official website, <fossil.com>.
Fossil owns the domain name registration for <fossil.com>, which
was registered on June 3, 1995. …
Complainant went on to state that the domain name <fossi.com> is confusingly similar to Complainant’s famous FOSSIL mark, arguing that it was registered as a trademark long before Respondent registered the domain name. In regards to this argument, Complainant contended:
In fact, Complainant’s FOSSIL mark had been used for more than 20 years and had become famous long prior to Respondent’s registration of the <fossi.com> domain name. One of Complainant’s primary product offerings is its line of watches and it owns multiple trademark registrations worldwide for the mark FOSSIL in connection with watches. Therefore, the consuming public would certainly associate “fossi.com” with Complainant.
Respondent’s domain name <fossi.com> contains a
misspelling of Complainant’s famous “FOSSIL” mark (merely omitting the “l”) and
the most common generic
Complainant
additionally argued that Respondent has no rights or legitimate interests in
the <fossi.com> domain name. Under
Policy ¶ 4(a)(ii), Complainant argued:
Respondent is not commonly known by Complainant’s mark, nor has
Respondent used the domain name in connection with a bona fide offering of
goods and services or for a legitimate noncommercial or fair use. Respondent is simply exploiting the fact that
Complainant’s customers and potential customers may mistakenly omit the “l” to
the FOSSIL mark and assume that a website located at a domain name
incorporating a misspelling of the FOSSIL trademark is affiliated with or
sponsored by Complainant. Complainant’s
FOSSIL Marks were registered and had gained worldwide recognition many years
before Respondent’s registration of the <fossi.com>
domain name. …
In this case, Respondent is using a misspelling of Complainant’s FOSSIL mark to exploit the fact that Complainant’s customers and potential customers may assume that a website located at a domain name consisting of a common misspelling of the brand name FOSSIL is affiliated with or sponsored by Complainant. The use of a domain name that is confusingly similar to Complainant’s FOSSIL trademark to attract computer users to Respondent’s own site is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). …
Moreover, the disputed domain name resolves to a website with a variety
of links referring to Complainant’s products as well as competing products sold
by unrelated third parties. … The depictions of watches on the home page
exacerbate this potential for confusion. Presumably, Respondent receives
compensation for directing consumers to these unrelated sites. Such competing
use is not a use 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). …
Finally, the Complainant has not authorized Respondent to use the FOSSIL
Marks in a domain name or company name, and Complainant is in no way affiliated
with Respondent. Thus, it is clear that Respondent has no rights or legitimate
interest in the disputed domain name <fossi.com>.
And Complainant also stated that Respondent registered and was using the <fossi.com> domain name in bad faith. Under Policy ¶ 4(a)(iii), Complainant argued that:
By using the <fossi.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s FOSSIL Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Unauthorized use of Complainant’s mark to divert computer users for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). …
In addition, Respondent has used the <fossi.com> domain name to redirect users to a web site featuring competitive products. … The site located at <fossi.com> contains a variety of links, including links to sites about competing products and unrelated businesses, products, and services. For example, the pages to which the user is directed after typing <fossi.com> contain links to businesses selling Movado, Citizen and Swiss Army watches, among others. … Use of Complainant’s mark to attract traffic to third-party links for competing products and services amounts to competition and disruption of Complainant’s business under Policy ¶ 4(b)(iii). …
Thus, Respondent has attempted to benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s well-known FOSSIL Marks, and such conduct of diversion, which is motivated by commercial gain, shows bad faith registration and use pursuant to Policy ¶ 4(b)(iv). …
B. Respondent
Respondent submitted the following Response:
Minor changes, such as spelling errors or omissions of one letter in 4-7
alphabetic word (one word) are essential. The result of such spelling errors or
omissions is absolutely another word. See, Rehau AG + Co. v.
Respondent asserts that the word “fossi” is generic and that the domain name at issue is comprised of common, descriptive terms and cannot be found to be confusingly similar to Complainant’s mark which is spelled differently. The word “fossi” is a common surname and the Italian word for “were”. In addition, it has over 4 million results in Google and this is evidence of the generic nature of the word “fossi” and of common surname. …
In the cases presented by Complainant, such as: Fossil, Inc. v. Constramat, FA 1153564 (Nat. Arb. Forum, April 3, 2008) (finding the domain name <fosil.net> which omitted an “s” confusingly similar to Complainant’s FOSSIL mark); Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007) (finding the domain name <fossill.com> which added an additional “l” was confusingly similar to Complainant’s FOSSIL mark); FMR Corp. v. Infomax Ltd., FA 464613 (Nat. Arb. Forum, May 31, 2005) (finding the domain name <fidelty.com> confusingly similar to Complainant’s mark Fidelity.com) the disputed domain names (fosil.net, fossill.com), (fidelty.com) are similar in sound with Complainant’s marks (fossil.com), (fidelity.com). In the case at issue, the <fossi.com> domain name is not similar in sound with Complainant’s FOSSIL mark. Therefore, Respondent denies that the consuming public would associate “fossi.com” or the word “fossi” with Complainant.
Also, Respondent was not aware of Complainant, its business, or its asserted claims until he received a copy of the Complaint in this action on September 30, 2008. As a result, the Respondent was not motivated to acquire <fossi.com> domain name based on a predatory or abusive intent directed at the Complainant.
Thus, Respondent denies that the <fossi.com> domain name is identical or confusingly similar to Complainant’s FOSSIL mark [under Policy ¶ 4(a)(i)].
Under Policy ¶ 4(a)(ii), Respondent stated the following:
Respondent acquired the <fossi.com> domain name at Sedo auction on December, 2006 for 600$. … Respondent says that he acquired the disputed domain name because it is a five-letter combination to which no party enjoys exclusive rights and the word “fossi” is easy to remember. Good 3-5 letter domain names are rare and are in demand. Respondent has not yet attempted to use it and just “parked” it for possible subsequent use. Respondent believes that investing money into domain names business is an entirely bona fide activity.
Anyone is entitled to register a domain name incorporating a simple combination of letters and the first to register such a domain name has a legitimate interest in it, provided it was not registered with the purpose of selling to Complainant or disrupting its business. Complainant does not have exclusive rights to this five-letter combination.
…
The <fossil.com> Complainant’s domain name was registered on June 3, 1995. The <fossi.com> Respondent’s domain name was registered on November 27, 1997. Complainant said that Complainant’s FOSSIL mark was registered as a trademark long before Respondent registered the domain name. Respondent noticed, that the first UDRP case initiated by Complainant was started on February, 2000. See Fossil, Inc. v NAS, FA 92525 (Nat. Arb. Forum February 23, 2000). Respondent argues that Complainant’s eight-year delay (minimum) in bringing its Complaint is evidence of an absence of consumer confusion or establishes rights in the Respondent to use the domain name.
As result, Respondent contends that he has rights and legitimate interest
in the disputed domain name <fossi.com>.
In regards to
Policy ¶ 4(a)(iii), Respondent asserted the following:
Respondent asserts he
never heard of Complainant prior to his acquisition
and use of the disputed domain name. Therefore he did not acquire the domain
name at issue primarily for the purpose of disrupting the Complainant’s
business. See Hydrologic Servs.,
Inc. v. Name Delegation, FA 707617 (Nat. Arb. Forum July 12, 2006) (finding
no bad faith registration and use of the <hysr.com> domain name because
“Given the brevity of the disputed domain name, the obscurity of the mark, the
geographic locations of the parties, and the nature of the parties' activities,
it would not be reasonable to infer that Respondent had actual knowledge of
Complainant or its mark when it registered the disputed domain name.”); Jet
Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (a finding of
bad faith registration requires that respondent registered the domain name with
complainant’s trademark in mind). Respondent is resident of
According to ICANN Policy 4 (a) (iii) Complainant must prove, that Respondent registered and used the domain name in bad faith. In Complaint (5. Factual and Legal Grounds. C: Registration and use in bad faith) Respondent sees only that the Complainant tries to prove part 2 of Policy 4 (a) (iii) (use in bad faith). Complainant did not show that Respondent knew or should have known of Complainant. See Wellington Window & Door Company v. Shen Kaixin, FA 1216196 (Nat. Arb. Forum September 19, 2008) (finding that Complainant did not show that Respondent knew or should have known of Complainant. This circumstance reinforces the conclusion that Respondent did not act in bad faith). There is no evidence that Respondent knew of Complainant when he purchased the domain name. As result, Respondent denies Complainant’s assertions pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv) that Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor and that Respondent has 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.
Finally, Respondent notes that he has not attempted to sell, rent, or otherwise transfer the domain name registration to the Complainant or to a competitor of that Complainant. Policy ¶ 4(b)(i).
Thus, Respondent denies registration and use in bad faith.
C. Complainant’s Additional
Submission
Highlights from Complainant’s Additional Submission are as follows:
In response to Complainant’s allegations regarding the confusing similar nature of “fossi” with FOSSIL, the Respondent has not provided any substantive or concrete evidence to support his assertion that “fossi” is a common surname and Italian word. The only evidence he provided is a printout from the search engine Google showing results for the search query “fossi”, with the argument that the sheer number of Google entries provide that “fossi” is generic and a common surname. Complainant submits that this cannot possibly be the case, and certainly does not constitute evidence of weight that should be considered by the Panel.
Moreover, Complainant asserts that Respondent was not using the domain name in connection with any sort of use of the Italian language or in connection with the “fossi” surname. Instead he used the disputed domain name to resolve to a web site with a variety of links referring to Complainant’s products as well as competing products sold by unrelated third parties. … Accordingly, he was using the domain name precisely because it was confusingly similar with Complainant’s FOSSIL mark. Furthermore, his use of the domain name in this way is clear evidence that he chose and used the domain name because it is confusingly similar to the Complainant’s FOSSIL mark.
Complainant went on to question how Respondent could say that he had no knowledge of Complainant or its mark when in fact he used the domain name for a web site featuring Complainant’s products as well as competing products sold by unrelated third parties.
Then Complainant pointed out that Respondent’s contention that he parked the domain name for future use is difficult to understand since the domain name resolves to a website that refers to Complainant’s products and products of others. Complainant argued that this was an actual commercial use of the domain name, and not innocent “parking.” Respondent has not denied receiving compensation for the business activity on this website.
Complainant further argued that it did not delay eight years in bringing this proceeding. Complainant states that it had no issue or concern with any use of the disputed domain name until Respondent acquired the domain name in December of 2006 and began to use the disputed domain name in the manner indicated.
D.
Respondent’s Additional Submission
Respondent submitted Google search results to show that the word “fossi” is Italian for the word “were.” Respondent also submitted evidence that “Fossi” is a surname, a tourist place in Corsica and an acronym of Family of Simplified Solver Interfaces, designed for an easy integration and selection of parallel solvers in Fortran codes which make use of compressed sparse row matrix format; and that “fossi” is a program for Mac to send faxes online.
Respondent denies Complainant’s allegations regarding Google results:
Respondent asserts that
Google results are general evidence of weight and of value of the word (domain
name). Google results were one of two reasons why Respondent acquired the <fossi.com> domain name. Also,
Respondent suggests that to acquire
a domain name without a prior Google search seems to be wilful [sic] blindness.
Google results show that no one has exclusive rights to the word
“fossi”, even now. … In many cases respondents use Google to show the generic
nature of their domains. … That is why
Google results are evidence that the word “fossi” is generic (not typo) and is
not similar to Complainant’s FOSSIL mark.
Respondent says the word “fossi” is short and easy to remember. Respondent states that it used the disputed domain name in connection with a bona fide offering of goods or services. Respondent denies Complainant’s allegations that he was using the domain name precisely because it was confusingly similar with Complainant’s FOSSIL mark. And Respondent reiterates that he was not aware of Complainant, its business, or its asserted claims until he received a copy of the Complaint in this action on September 30, 2008.
Respondent further states:
Respondent reiterates his assertions that “fossi” and FOSSIL are different in sound, and denies that the consuming public would thereby associate the domain name with Complainant. The consuming public may associate the domain name with anything…
Respondent repeats he was not aware of Complainant, its business, or its asserted claims until he received a copy of the Complaint in this action on September 30, 2008. …
Respondent says that Complainant’s allegations under Policy ¶ 4(a)(ii) are based on the use of the disputed domain name as of September 30, 2008, and that Complainant has not provided concrete evidence for period from December 2006 (when Respondent has acquired <fossi.com>) till August 2008 which could be clear evidence of bad faith registration and use.
Respondent highlights the following:
Respondent acquired the <fossi.com> domain name on December 2006. From December 2006 till September 2008 he had contracts with 3 parking programs: NameDrive.com (ns1.fastpark.net, ns2.fastpark.net), SmartName.com (ns1.smartname.com, ns2.smartname.com) and finally BigJumbo.com (ns1.malkm.com, ns2.malkm.com).
Respondent provided evidence of “parking” with each of these three providers. Respondent says that this “parking” was a bona fide offering of goods or services. Respondent says this is clear evidence that Respondent has not registered the <fossi.com> domain name in bad faith and he was not aware of Complainant, its business, or its asserted claims on this date.
Respondent asserts that BigJumbo is a parking program powered by Skenzo to offer a legitimate business of targeted advertising searches that are legal everywhere in the world and are actually undertaken in connection with industry leader Google and Yahoo. BigJumbo.com system uses proprietary learning algorithms allowing it to super-optimize performance of domains by analyzing every hit in real-time. Respondent states that it has no control over what terms appear on his domain name and further that a domain name holder cannot be responsible for the potentially offending content where he has contracts with third parties that control that content. Respondent argues that the revenue history shows that the website template was changed recently (with September revenue more than two times that of March or April revenue). Respondent contends that is the result of third party activity.
In summary, Respondent asserts that he used the domain in connection with a bona fide offering of goods or services, and not used it in bad faith because he was not aware of Complainant, its business, or its asserted claims until he received a copy of the Complaint in this action on September 30, 2008.
FINDINGS
Complainant has rights in the FOSSIL
trademark. The disputed domain name <fossi.com>
is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate
interests in the disputed domain name.
Respondent has registered and is using the
disputed domain name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 has established rights in the FOSSIL
mark through registration with the United States Patent and Trademark Office
(“USPTO”) pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes,
FA 652743 (Nat. Arb. Forum Apr.
17, 2006) (“Complainant has established rights in the MICROSOFT mark through
registration of the mark with the USPTO.”); see
also
The <fossi.com> domain name would be identical to
Complainant’s mark but for the omission of the last letter “l” and the
inclusion of the generic top level domain (“gTLD”) “.com.” The inclusion of “.com” is typically
considered irrelevant in a Policy ¶ 4(a)(i)
analysis. When a disputed domain name
differs from a given mark by the omission of one letter, that disputed domain
is not adequately distinguished from the mark. Since the <fossi.com> domain name differs by only the omission of the
letter “l” from Complainant’s FOSSIL mark, this does not differentiate the
disputed domain name. As a consequence,
the <fossi.com> domain name is
confusingly similar to Complainant’s FOSSIL mark pursuant to Policy ¶ 4(a)(i). See 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); see
also
Therefore, the disputed domain name is confusingly
similar to Complainant’s FOSSIL mark pursuant to Policy ¶ 4(a)(i).
The Panel agrees with Complainant that the logical inference to be drawn from Respondent’s current use of the domain name is that Respondent is using the domain name because it is confusingly similar to Complainant’s FOSSIL mark. The Panel also agrees that Respondent has not been commonly known by the domain name, that Respondent is not making a legitimate noncommercial or fair use of the domain name and that Complainant has not given Respondent permission to use the domain name. However, this does not end the matter.
Respondent states that it acquired the <fossi.com> domain name from an online auction in December of 2006 for US $600.00. Respondent states that it acquired the disputed domain name because it is a five letter combination that is easy to remember and that Respondent had no intention to take advantage of Complainant’s mark. It states that it “parked” the disputed domain name for “possible subsequent use.” Respondent’s submissions include documents that demonstrate that the domain has been parked with third parties during the time frames alleged by Respondent. The first evidence that the disputed domain name was used in connection with Complainant’s mark is in September of 2008.
The documents presented by Respondent demonstrate that Respondent has “parked” the domain name with third parties. He says he acquired it for “possible subsequent use”. After almost two years, however, Respondent has made no preparations, nor has he taken any steps, to use the domain name for any legitimate purpose. Other than some vague notion of possible subsequent use, he has provided no evidence to show the intended use for the domain name. In the Panel’s view, Respondent’s evidence does not meet the onus on Respondent under Policy 4(c)(i) to establish use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. See Beat the Bookstore, LLC v. May Enter., FA 589501 (Nat. Arb. Forum Dec. 19, 2005) (finding that the respondent’s “protracted period of inaction” in its development of the disputed domain name for over two years indicated that the respondent had no rights or legitimate interests in the disputed domain name); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
The Panel has
therefore concluded that Respondent has no rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(a)(ii).
As the Panel has already pointed out, Respondent
acquired the disputed domain name for some vague possible subsequent use.
Respondent provided no evidence of what use might be intended for the site or
what business Respondent intended to carry on in connection with the disputed
domain name. After Respondent’s registration of the disputed domain name, Respondent
effectively did nothing with the web site for almost two years. Respondent’s
vague suggestion that the domain was acquired for some possible subsequent use
is not sufficient in a case such as this where the actual use to which the site
has now been put causes confusing similarity with Complainant’s mark. In all
these circumstances, Respondent’s failure to develop a web site or provide any
evidence about the intended subsequent use for the web site raises an inference
of registration in bad faith pursuant to Policy ¶ 4(a)(iii).
See Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s
failure to develop its website in a two year period raises the inference of
registration in bad faith); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding
that the non-use of a disputed domain name for several years constitutes bad
faith registration and use under Policy ¶ 4(a)(iii)); see
also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that inactive holding of a domain name
permits an inference of registration and use in bad faith).
The disputed domain name resolves to a website displaying links to Complainant’s products and those of various third-parties, many of whom compete with Complainant. Complainant contends that Respondent is attempting to attract Complainant’s customers in order to divert some of them to competitors of Complainant. The inference to be drawn from the evidence is that Respondent is using the disputed domain name competitively. This is bad faith use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also
contends that Respondent has registered and is using the disputed domain name
for the purpose of intentionally attracting for commercial gain Internet users
to Respondent’s website by creating a likelihood of confusing with
Complainant’s mark. The disputed domain name is confusingly similar to
Complainant’s mark. The disputed domain name resolves to a website displaying
information about watches and other similar products sold under Complainant’s
FOSSIL mark. Complainant argues that the
Panel should infer that Respondent must be commercially benefiting in some way
through its advertisement and sale of both Complainant’s goods and the goods of
Complainant’s competitors. Respondent’s evidence that he has obtained payment
for hits to the web site is actually evidence that he is benefiting
commercially. Taken in total, the Panel concludes that this evidence
constitutes bad faith use of the <fossi.com>
domain name pursuant to Policy ¶ 4(b)(iv). See
Finally, Complainant
points out in its Additional Submission that Respondent cannot assert that it
has innocently parked the disputed domain name. Respondent is responsible for
the material displayed on the parked website and that the act of parking the
website can evidence bad faith. The Panel agrees with this assessment. See XM Satellite Radio Inc. v.
Kennedy, FA 796199 (Nat.
Arb. Forum Nov. 7, 2006) (“While Respondent undoubtedly
parked the domain names with GoDaddy, he is responsible for the content he
allows GoDaddy to put on his domains. Respondent could have equally well set up his own ‘parked’ page
without any inappropriate content.”); see
also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum,
Jan. 15, 2008) (finding bad faith registration and use where the respondent
parked the disputed domain name with the registrar because “the view of the
panel is that, in the absence of evidence to the contrary in any particular case,
of which there is none in the present case, a party in the position of the
Respondent is also responsible for the sponsored links currently appearing on
the website.”).
The Panel
therefore concludes that Respondent registered and is using the disputed domain
name in bad faith pursuant to 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 <fossi.com> domain name be TRANSFERRED
from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Dated: November 19, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum