Multi Time Machine, Inc. v.
Claim Number: FA0910001287689
Complainant is Multi Time Machine, Inc. (“Complainant”), represented by Jeffrey
R. Cohen, of Millen, White, Zelano & Branigan, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <specialopswatches.com>, registered with Enom, 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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
Complainant requests that the domain name <specialopswatches.com> be transferred from Respondent to Complainant.
Complainant submits that it has rights in the trademarks MTM
SPECIAL OPS, MTM SPEC OPS and MILITARY OPS through its U.S. Federal trademark
registrations listed below. Furthermore Complainant relies on its rights at
common law acquired through the use of these marks in association with the sale
of timepieces since at least
as early as
In addition to the above trademarks, Complainant is the owner of the almost identical domain name <specialopswatch.com> that it registered on or around October 28, 2003.
Complainant owns and operates an Internet
website at http://specialopswatch.com. The first recorded use of Complainant’s
domain name <specialopswatch.com> is January 25, 2004. Complainant has furnished
print-outs from Internet Archive, accessed as of
Complainant claims to have expended considerable funds and made significant efforts in promoting its goods identified by the Complainant's trademarks. These efforts include, without limitation, advertising expenditures of greater than one million dollars ($1,000,000.00) annually in major magazines such as Esquire, Men's Fitness, Men's Journal, GQ, and online and in trade shows. Complainant's sales volume for the MTM SPECIAL OPS timepieces is approximately eight million dollars ($8,000,000.00) annually.
Complainant submits that the domain name <specialopswatches.com> at issue is identical or confusingly similar to Complainant’s SPECIAL OPS trademark. Complainant submits that the disputed domain name incorporates the entirety of Complainant's SPECIAL OPS mark and incorporates the primary portion of Complainant's MTM SPECIAL OPS mark ("SPECIAL OPS") and simply removes Complainant's secondary, or "house" mark ("MTM").
submits that the test that should be applied to determine confusing similarity
under the Policy, is whether an objective bystander,
when reading the domain name, would deduce that the disputed domain name was
the domain name of the trademark owner. See generally, Amazon.com, Inc. v... c/o Jason Banks, Case No. FA0608000785586
submits that its MTM SPECIAL OPS mark consists of Complainant's house mark
("MTM"), which is an arrangement of letters that is an acronym for
Complainant's corporate name, in combination with the terms,
"SPECIAL" and "OPS". "Ops" is a common
abbreviation for the word "operations". The removal of Complainant's
house mark does not avoid a likelihood of confusion, because Internet users
familiar with Complainant's mark are likely to assume that the house mark
simply identifies what had previously been an anonymous source. See, e.g., In re: Fiesta Palms, LLC, 85 U.S.P.Q.2d
1360 (MVP casino vs. CLUB PALMS MVP casino: likely confusion as found). See
also Trademark Manual of Examining Procedure, § 12.07(b)(iii), it is a general
rule that likelihood of confusion is not avoided between otherwise confusingly
similar marks merely by adding or deleting a house mark or matter that is
descriptive of suggestive of the named goods or services." Other panels
have determined that the addition of three random letters does not add any
distinction or source-identifying significance. See, e.g., WorldPay Limited v. Daniel Ferries, Case
The subtraction of the MTM element of Complainant's mark does not distinguish the disputed domain name <specialopswatches.com> so as to avoid a finding of confusing similarity. The other differences between the disputed domain name and Complainant's trademarks are immaterial. The disputed domain name merely adds the generic term "watches" (a synonym for the goods provided by Complainant under the SPECIAL OPS trademark and the MTM SPECIAL OPS trademark).
addition of the word “watches”, a term describing Complainant's primary goods, to
Complainant's trademark does not sufficiently distinguish the domain name to
avoid a finding of confusing similarity. See, e.g., Walkers Shortbread Limited and Walkers
Shortbread Inc. v. Domain Holdings, Case No. FA 0705000985160 (NAF
addition of such a descriptive term serves to heighten and intensify the
confusing similarity between the disputed domain name and Complainant's
registered mark. See, e.g., Texas Wind Power v. Wind Works, Case No. FA0903001252746 (
the addition of the generic top level domain name ".com" is not
relevant in determining whether a domain name is confusingly similar. See,
e.g., Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (NAF
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name.
submits that Respondent's use of the disputed domain name is neither a bona fide offering of goods or services
pursuant to Policy § 4(c)(i) nor a legitimate
noncommercial or fair use in accordance with Policy § 4(c)(iii). Prior to
receiving notice of the dispute, the disputed domain name pointed to a parking
page replete with links redirecting Internet users to third party commercial
websites. Respondent’s website contained the marks of Complainant's competitors
and links to third party commercial websites, some of which offer competing
goods. Complainant submits that such use is neither a bona fide offering of services nor a legitimate noncommercial or
fair use. See, e.g., Florists'
Transworld Delivery, Inc. v. Millipede c/o Jonathan Nash, Case No.
The WHOIS information and all other information on the record give no indication that Respondent is commonly known by the disputed domain name. Complainant has not authorized Respondent to register a domain name containing its registered mark.
To the best of Complainant's knowledge, Respondent is not known by a name consisting in whole or in part of the term, "Special Ops Watches", nor could it be without authorization from the Complainant. Respondent is not, and has never been, an authorized reseller of Complainant's products, and does not have the permission to use the SPECIAL OPS marks and/or domain names.
Complainant submits that Respondent's intent in registering and using the disputed domain name is to redirect Internet users to commercial websites that are unrelated to Complainant. Complainant submits that presumably Respondent earns a commission or pay-per-click referral fee. Such use is neither a bona fide offering of goods or services pursuant to Policy § 4(c)(i) not a legitimate noncommercial or fair use in accordance with Policy § 4(c)(iii).
To the extent that Respondent contends that the links on the site were chosen by the registrar, Complainant submits that this is immaterial. Respondent is ultimately responsible for the content of its site, even if such content is generated by the registrar. The Andersons, Inc. v. Jonathan Forester, Case No. FA0804001173272 (NAF May 14, 2008)(where links to sites of Complainant's competitors on Respondent's site were chosen by GoDaddy, allegedly without Respondent's knowledge or input, the panel held that Respondent could not "disclaim responsibility for the various links on the Respondent's website which are concerned with the Complainant or with the field of commercial activity of the Complainant.").
previously submitted, prior to receiving notice of the dispute, the disputed
domain name was used as a parking page to redirect Internet users to other
commercial websites containing competing goods to those of Complainant. This
alone should be sufficient evidence of registration and use of the disputed
domain name in bad faith. In similar circumstances, NAF panels have presumed
that a respondent is commercially benefiting from a domain name for each
misdirected Internet user to a third-party website through the use of
click-through fees, and have not hesitated to find that such use constitutes
bad faith under UDRP § 4(b)(iv). See, e.g., Celgene Corp. v. Shenglu, Case No.
Respondent did not seek permission from Complainant to incorporate the SPECIAL OPS trademark or the MTM SPECIAL OPS trademark in the disputed domain name or on the website to which the domain name points. Nevertheless, the website to which the disputed domain name resolves contains Complainant's trademarks used in connection with identical goods. For example, the website states, "Original Special Ops Watches Now Available to the Public" and contains links entitled "Special Ops Watches", "MTM Watches", "Military Ops Watch". The use of Complainant's trademarks in connection with identical goods creates a likelihood of confusion with the SPECIAL OPS mark and the MTM SPECIAL OPS mark as to the source, sponsorship, affiliation or endorsement of the goods on Respondent's website and/or accessible therefrom.
Respondent's unauthorized use of Complainant's intellectual property on the website to which the domain name points constitutes further evidence of Respondent's bad faith.
Prior to receiving notice of the dispute, Respondent reproduced Complainant's copyrighted image on the website to which the domain name pointed. This copyrighted image included an image of Complainant's watch, and came directly from Complainant's website. In its initial communication to Respondent, Complainant informed Respondent that such unauthorized use of Complainant's copyrighted image constituted copyright infringement.
Respondent replaced the image on its website with another of Complainant's
copyrighted images. This image consists solely of an image of Complainant's
watch. Respondent subsequently replaced the image on the website with another
of Complainant's copyrighted images. The latest image consists of individuals
wearing Complainant's watches. Complainant has furnished copies of the content of
Respondent’s website as of
Complainant submits that Respondent is using Complainant's copyrighted images to further confuse Internet users as to the source, sponsorship, affiliation or endorsement of the goods on Respondent's website and/or accessible therefrom. Respondent's unauthorized reproduction of Complainant's copyrighted images is further evidence of Respondent's bad faith registration and use of the domain name.
Complainant submits that a finding of bad faith is required where “[w]here is
no plausible explanation for the registration of a domain name other than to
trade on the goodwill of the complainant.” Florists'
Transworld Delivery, Inc. v. Shibata Kenyu, Case No. FA0201000103573 (NAF
the case at bar, Complainant's MTM SPECIAL OPS mark is at least suggestive and
unique. Moreover, it is the subject of a
Respondent submits that
the disputed domain name <specialopswatches.com> was
The names “special ops” and “watches” are generic in nature, dictionary words, and therefore non exclusive to any one particular trademark holder. Currently, according to the TESS records on the USPTO website there are 13 registrations reflecting the word(s) “special ops” in various combinations, and none for “special ops watches.” Only 2 of the 13 registrations on record for “special ops” are owned by MTM, and both registrations: 3,167,484 and 3,588,599 were registered after Respondent’s registration of the disputed domain name.
Furthermore, Respondent submits that the use of “military ops watches” as a search term on Respondent’s web site does not constitute bad faith either, as there are no trademarks owned by Complainant for these generic dictionary words. While researching this matter, Respondent discovered three URL’s that use Complainant’s name/and or trademark but are not owned by Complainant namely: MTMSpecialOps.com, MTMWatch.com, and MTMWatches.com.
Complainant has stated that when the disputed domain name was registered it was not identical or confusingly similar to any trademark existing at that time.
There is no exclusivity for the words “special ops” or “watches”. There is nothing in the case law relating to the Policy that prohibits the registration of generic words and/or letter combinations in anticipation that someone sometime in the future will acquire a trademark in such words or letters.
If the law were as Complainant would have it, then holders of later acquired trademarks would have a right to claim domain names earlier registered in good faith.
The <specialopswatches.com> domain name at issue was in fact registered in good faith. The prospect that holders of newly minted trademarks can capture a domain name speculatively registered may excite a fair number into believing entitlement, but it is not the law. The first to register in good faith (whether or not later he uses the domain name in bad faith, which is not the case here, cannot be abusive against a nonexistent trademark.
Respondent argues that furthermore, a domain name registrant is a cybersquatter if it intentionally targets an existing trademark, and since there were no trademarks on record for Complainant for “special ops” or “special ops watches” when the domain name was registered, Respondent cannot be accused of that either.
Also, Respondent points to the fact that it did not try to sell the disputed domain name to Complainant.
Respondent submits that its website is a search page for special op watches, and has never been advertised in any way whatsoever on any search engine, print ad, etc. Any traffic it receives is 100% “type in” only. The image that appears on Respondent’s landing page is a non copyrighted image from a Special Ops website, and the watches shown in that image are not manufactured by Complainant, contrary to the Complainants’ accusations.
The image originally used on Respondent’s website were not taken from Complainant’s website, but rather from the Internet on the website that advertised a TV show.
Respondent was unaware
that it was copyrighted, and when Respondent was first notified by
Complainant’s attorney on or about
Respondent submits that the unfortunate truth is that some trademark holders try to exploit the UDRP process that can be, and has been under false accusations, used to wrest domain names from legitimate holders.
In consideration of the foregoing, Respondent requests that this Panelist rule in favor of the Respondent.
The domain name at issue <specialopswatches.com> was registered
Complainant is the owner of the following U.S. Federal registered trademarks:
Mark: MTM SPECIAL OPS
Registration No.: 3,167,484
Goods: time pieces.
First Use in Commerce:
Mark: MTM SPEC OPS
Registration No.: 3,588,599
First Use in Commerce:
Mark: MILITARY OPS
Registration No.: 3,134,557
First Use in Commerce:
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.
This Panel accepts that Complainant has rights in the trademarks MTM SPECIAL OPS and MTM SPEC OPS and MILITARY OPS.
Complainant relies in particular on its rights in MTM SPECIAL OPS and claims that the disputed domain name <specialopswatches.com> is confusingly similar to that mark. Complainant uses and has registered the mark for use in relation to timepieces.
This Panel is satisfied that the combination of the most distinctive elements of Complainants mark viz. the words SPECIAL and OPS, with the word “watches” results in there being a confusing similarity between the <specialopswatches.com> domain name and Complainant’s MTM SPECIAL OPS mark.
In the view of this Panel the words SPECIAL OPS are a strong and probably the dominant element of Complainant’s mark. The addition of the word “watches,” merely add to the likelihood of confusion because the Complainant uses the trademark in relation to time pieces and has established a reputation for and goodwill in such use.
Complainant has therefore satisfied the first element of the test in Policy § 4(a)
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the <specialopswatches.com> domain name.
In such circumstances the burden of proof
shifts to Respondent to prove such rights or legitimate interest. See
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Respondent has not furnished any explanation as to why it chose and registered this domain name. Respondent does not appear to engage in any business relating to special operations or watches. The only known activity of Respondent is the ownership and management of the <specialopswatches.com> domain name and the web page to which it is directed. Respondent does not acquire rights or legitimate interest in the domain name merely by using the domain name as the address of a parking page.
On the other hand Complainant has made out a prima facie case that it has used and established rights in MTM SPECIAL OPS and has been using the almost identical <specialopswatch.com> domain name to market its timepieces since prior to the date on which Respondent registered the <specialopswatches.com> domain name at issue.
As Respondent has failed to discharge the burden of proof, Complainant is entitled to succeed in the second element of the test in Policy § 4(a) also.
Complainant claims first use of the
trademarks MTM SPECIAL OPS and MILITARY OPS in commerce on
Complainant claims first use of the trademark
MTM SPEC OPS on
registered the almost identical domain name <specialopswatch.com> on
The first recorded
use of Complainant’s domain name <specialopswatch.com> was on
Respondent subsequently registered the <specialopswatches.com>
domain name at issue on
The filing date for Complainant’s MILITARY
OPS trademark registration no. 3,134,557 was
The filing date for
Complainant’s MTM SPECIAL OPS trademark registration no. 3,167,484 was December
17 and it was registered on
The filing date for
Complainant’s MTM SPEC OPS trademark registration no. 3,588,599 was
The <specialopswatches.com domain name was registered subsequent to the claimed first use of the trade marks by Complainant but prior to the filing of the first application for registration of the trademarks on which Complainant relies.
It is alleged that Respondent registered the domain name to take advantage of Complainant’s goodwill in its trademarks. It follows that if Complainant’s claim that the domain name was registered in bad faith is to succeed it must rely on pre-January 19, 2005 common law rights, reputation and goodwill in the use of SPECIAL OPS rather than the subsequently filed trademark registrations.
Respondent states that due diligence investigations were carried out by Respondent prior to the registration of the domain name at issue. Such investigations would inevitably have identified Complainant’s pre-existing, almost identical domain name <specialopswatch.com>, owned and used by Complainant at the time the domain name at issue was registered. Respondent must therefore have been aware of Complainant’s business through its Internet presence.
On the balance of probabilities therefore when Respondent registered the disputed domain name it was aware of Complainant and its business and knowingly chose and registered the domain name at issue in order take advantage of Complainant’s reputation and goodwill so as divert Internet users to Respondent’s website by creating confusion between the disputed domain name and Complainant’s business, its trademarks and its website.
On the evidence by choosing and registering the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
On the evidence there is no plausible explanation for the registration of a domain name other than to trade on the goodwill of Complainant. It is neither necessary nor appropriate for this Panel to make any findings in relation to the copyright issues raised by Complainant.
This Panel is satisfied therefore and finds that Respondent registered the domain name in bad faith.
It follows therefore that Complainant has also satisfied the third and final element of the test in Policy § 4(a) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <specialopswatches.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
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