Fossil, Inc. v. Zhouyan c/o yan zhou
Claim Number: FA1107001398633
Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Zhouyan c/o yan zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <topfossil.com>, registered with BizCN.com, Inc.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2011; the National Arbitration Forum received payment on July 14, 2011. The Complaint was submitted in both Chinese and English.
On July 14, 2011, BizCN.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <topfossil.com> domain name is registered with BizCN.com, Inc. and that Respondent is the current registrant of the name. BizCN.com, Inc. has verified that Respondent is bound by the BizCN.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of August 15, 2011 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@topfossil.com. Also on July 25, 2011, 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 August 18, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Fossil is the owner of numerous proprietary marks used in connection with watches, jewelry, fashion accessories, leather goods 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, including in China where the Respondent resides. Of particular relevance to this proceeding are: (a) U.S. Registration No. 1467255, for the mark FOSSIL, registered in 1987 for watches; (b) U.S. Registration No. 2599215 for the mark FOSSIL, registered in 2002 for jewelry; (c) China Registration No. 633589 for the mark FOSSIL, registered in 1993 for watches; (d) China Registration No. 3987962 for the mark FOSSIL (Chinese characters), registered in 2006 for chains, necklaces, rings, earrings, pendants for necklaces, bracelets and other goods; and (e) China Registration No. 4560188 for the mark FOSSIL, registered in January of 2011 for a variety of goods in Class 14.
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 United States and around the world. Fossil has invested substantial effort and expense to develop goodwill in the FOSSIL Marks and to cause consumers throughout the world to recognize the FOSSIL Marks as distinctly and exclusively designating products associated with the Complainant. More than 25 years of promotional efforts have made the FOSSIL Marks famous and distinctive. These efforts have resulted in the sale of Fossil’s products in department stores, Fossil branded stores, and specialty retail stores in more than 90 countries, including in China where the Respondent resides. Fossil’s principal offerings include an extensive line of watches sold under its FOSSIL brand, along with jewelry, clothing, leather goods, sunglasses, fashion accessories and footwear.
In addition to its sales through retail stores, Fossil generates significant revenue from sales through the Complainant’s official website, www.fossil.com. Fossil first established its ecommerce website at www.fossil.com in November of 1996. Fossil owns the domain name registration for <fossil.com>, which was registered with Network Solutions on June 3, 1995.
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The domain name <topfossil.com> is confusingly similar to Complainant’s famous FOSSIL mark, which was registered as a trademark long before Respondent registered the domain name on March 15, 2011. In fact, Complainant’s FOSSIL mark had been used for more than 25 years and had become famous long prior to Respondent’s registration of the <topfossil.com> domain name. The consuming public would certainly associate <topfossil.com> with Complainant.
Respondent’s domain name <topfossil.com> contains Complainant’s famous “FOSSIL” mark as well as the generic term “top” and the most common generic TLD “.com”. The mere addition of a common, generic or descriptive term does not negate the confusing similarity between Respondent’s domain name and Complainant’s mark. See Fossil, Inc. v. www.fossil-watch.org c/o Host Master, FA335513 (Nat. Arb. Forum, November 9, 2004) (finding the domain name <fossil-watch.org> “confusingly similar to Complainant’s FOSSIL mark because the domain name incorporates Complainant’s mark in its entirety, adding a hyphen and the generic or descriptive term “watch,” which is related to Complainant’s business”). See also Fossil, Inc. v. Amorvine Global Ltd., FA954070 (Nat. Arb. Forum, May 17, 2007) (finding <fossil-watch.info>, a domain name composed of the Complainant’s FOSSIL mark in its entirety with the word “watch”, a word that describes Complainant’s business, confusingly similar to Complainant’s FOSSIL mark) and Red Hat, Inc. v. Dave Haecke, FA726010 (Nat. Arb. Forum Jul 24, 2006)(finding redhatconsulting.com confusingly similar to RED HAT and awarding transfer). Thus, the mere addition of the generic term “top” to the FOSSIL mark in the domain name does nothing to avoid confusing similarity.
It is also important to note that the inclusion of the top level domain name, “.com” has no effect on the determination of whether the domain name is confusingly similar to Complainant’s marks. See Rollerblade, Inc. v. McCrady, D2000-049 (WIPO June 25, 2000) (finding that the top level 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 mere addition of a gTLD does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Fossil, Inc. v. Amorvine Global Ltd., FA954070 (Nat. Arb. Forum, May 17, 2007) and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Accordingly, the domain name is confusingly similar to Complainant’s FOSSIL Mark under Policy 4(a)(i).
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the <topfossil.com> domain name. 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 typing in the domain name and being directed to Complainant’s website will believe that <topfossil.com> is a domain name that is owned and controlled by Complainant. Complainant’s FOSSIL Marks were registered and had gained worldwide recognition many years before Respondent’s registration of the <topfossil.com> domain name. See Accu Weather, Inc. v. Global Net 2000, Inc., FA 94645 (Nat. Arb. Forum June 1, 2000) (finding that the respondent had no right or legitimate interest in the domain name because the complainant’s mark was registered and gained worldwide recognition many years before the widespread use of the Internet and the recent registration of the respondent’s domain name).
WHOIS identifies Respondent as Zhouyan or Yan Zhou. Respondent is not commonly known by Complainant’s FOSSIL trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s FOSSIL trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
In this case, Respondent is using Complainant’s FOSSIL mark in the domain name to direct to a website that sells products that are counterfeit copies of Complainant’s jewelry products, and it also contains various “news” pages relating to Complainant and its products. 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). Microsoft Corporation v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004); see also U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website).
Respondent has taken Complainant’s FOSSIL Marks without authorization in order to misleadingly and deceptively divert Internet users to its web site for commercial gain. The use of a domain name that is confusingly similar to Complainant’s famous trademark to attract consumers to Respondent’s own website 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). See Microsoft Corp. v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004). “The Respondent’s use is little more than the use of a famous trademark to divert traffic to…itself.” Microsoft Corp. v. Whois Privacy Protection Service/Lee Xongwei, D2005-0642 (WIPO October 12, 2005) (finding no rights or legitimate interests in the domain name <msnmoney.com>).
Additionally, Respondent is posting news feeds and has other references at its website using the FOSSIL mark that make the site appear to be one operated by Complainant. Attempting to pass oneself off as a trademark holder is not a legitimate use. See Microsoft Corp. v. lijiuliang, FA0912001300266 (Nat. Arb. Forum Feb. 11, 2010)( “Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is 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)”); Crow v. LOVEARTH.net, FA203208 (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....”); and Mulberry Company (Design) Ltd. v. ronld chen AKA chen, ronld, D2010-1718 (WIPO Nov. 26, 2010)(awarding transfer of <mulberry-bags-store.com> and noting: “[The] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”).
For the above reasons, the Respondent has no rights or legitimate interests in the <topfossil.com> domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
At the time that Respondent registered the domain name, Complainant’s FOSSIL mark was unquestionably famous and familiar to Internet users. See Microsoft Corporation v. Cedric Thompson, D2004-1097 (WIPO, April 14, 2005). Here, it is clear that Respondent was not only familiar with Complainant’s famous trademark at the time of registration of the domain name, but intentionally adopted a name identical to the FOSSIL Marks in order to create an association with Complainant and its products.
Respondent registered and is using the <topfossil.com> domain name in bad faith. By using the <topfossil.com> domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s FOSSIL Marks as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant. 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). See Fossil, Inc. v. Tan Kim Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007) (finding bad faith where respondent used the disputed domain name to resolve to a website featuring links to Complainant’s competitors and constituted a disruption of Complainant’s business).
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its famous mark is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Respondent deliberately adopted a domain name that uses FOSSIL Mark in order to sell jewelry that is not made by Fossil. Respondent’s purposeful selection of a domain name incorporating the famous, federally registered FOSSIL Mark and use in connection with a revenue-generating website shows intent to mislead or confuse consumers as to the source or affiliation of the website. See Identigene, Inc. v. Genetest Lab., 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 Complainant is the source of or is sponsoring the services offered at the site); and MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Respondent has attempted to benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s famous FOSSIL Mark, and this conduct of diversion, which is motivated by commercial gain, shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004).
Additionally, by embedding Complainant’s FOSSIL mark into its domain name and using news feeds and other terms describing Complainant and its products, as described above, Respondent’s web site gives the false impression of an affiliation with Complainant and its famous mark, making it clear that Respondent has sought to benefit commercially from Complainant’s well-established goodwill. Respondent is clearly selling counterfeit products through the disputed domain name <topfossil.com>. Use of Complainant’s famous FOSSIL mark to sell counterfeit goods is precisely the sort of conduct that falls under the Policy and thus evidences Respondent’s bad faith registration and use of the disputed domain names. See Skechers USA v. Moses Zheng FA1388961 (Nat. Arb. Forum July 1, 2011) (finding that use of the disputed domain name to sell counterfeits of Complainant’s goods was not a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶4(c)(iv)), citing Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to [UDRP] ¶4(c)(i).”); and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶4(c)(iii).”); Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Based on the foregoing, it is clear that Respondent has registered and used the domain name in bad faith pursuant to Policy ¶4(a)(iii).
B. Respondent failed to submit a Response in this proceeding.
Complainant Fossil, Inc. owns the FOSSIL mark which it uses in connection with watches, jewelry, fashion accessories, leather goods, and clothing. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,467,255 registered December 1,1987) and with China’s State Intellectual Property Office (“SIPO”) (e.g., Reg. No. 633,589 registered May 7, 2006) for its FOSSIL mark.
Respondent Zhouyan c/o yan zhou registered the <topfossil.com> domain name on March 15, 2011. The disputed domain name resolves to Respondent’s website where Respondent sells counterfeit copies of Complainant’s jewelry products and contains false news articles relating to Complainant.
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.
Complainant provides evidence of multiple trademark registrations with the USPTO (e.g., Reg. No. 1,467,255 registered December 1,1987) and the SIPO (e.g., Reg. No. 633,589 registered May 7, 2006) for its FOSSIL mark. The Panel finds Complainant’s trademark registrations are sufficient to establish rights in its FOSSIL mark under Policy ¶4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to 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 claims Respondent’s <topfossil.com> domain name is confusingly similar to Complainant’s FOSSIL mark because the only alterations are the additions of the generic term “top” and the generic top-level domain (“gTLD”) “.com.” As Complainant notes, past panels have held the addition of a gTLD is irrelevant to a Policy ¶4(a)(i) analysis and the addition of a generic term does nothing to remove a disputed domain name from the realm of confusing similarity. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Respondent’s web site even goes to the trouble of capitalizing the F in <topFossil.com>. Therefore, the Panel concludes Respondent’s <topfossil.com> domain name is confusingly similar to Complainant’s FOSSIL mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant claims Respondent does not have any rights or legitimate interests in the <topfossil.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has 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 name. Out of an abundance of caution, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Complainant contends Respondent is not commonly known by the <topfossil.com> domain name. Respondent is not affiliated with Complainant and Respondent is not authorized or licensed to use Complainant’s FOSSIL mark. The WHOIS information identifies the domain name registrant as “Zhouyan c/o yan zhou,” which the Panel determines is not similar to the disputed domain name. Respondent has failed to present any evidence to contradict Complainant’s other assertions. Thus, the Panel holds Respondent is not commonly known by the <topfossil.com> domain name pursuant to Policy ¶4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <topfossil.com> domain name resolves to Respondent’s website where Respondent sells counterfeit versions of Complainant’s jewelry products. Complainant argues Respondent is attempting to make the resolving website appear to be operated by Complainant by containing false news feeds relating to Complainant on the website. The Panel finds Respondent’s attempt to profit by selling counterfeit versions of Complainant’s products and pass itself off as Complainant is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).”); 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 Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent uses the <topfossil.com> domain name to admittedly sell counterfeit copies of Complainant’s jewelry. While Complainant does not argue such a use disrupts Complainant’s business, past panels have determined similar situations are evidence of bad faith registration and use under Policy ¶4(b)(iii). See 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); see also 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).”). This Panel adopts their logic. Consequently, this Panel holds Respondent’s registration and use of the disputed domain name is evidence of bad faith pursuant to Policy ¶4(b)(iii).
According to Complainant, Respondent is attempting to sell counterfeit copies of Complainant’s products at Respondent’s website resolving from the confusingly similar <topfossil.com> domain name. Complainant also contends Respondent includes a fake news feed about Complainant in order to make the resolving website appear to the casual browser to be legitimately affiliated with Complainant. Complainant argues Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to Complainant’s sponsorship, affiliation, or endorsement of Respondent’s website. The Panel agrees with Complainant and finds Respondent’s registration and use of the <topfossil.com> domain name constitutes bad faith under Policy ¶4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant claims Respondent’s attempt to sell counterfeit versions of Complainant’s goods under Complainant’s name and Respondent’s inclusion of a news feed relating to Complainant are both evidence that Respondent is attempting to pass itself off as Complainant to a casual browser. Based on the evidence in the record, the Panel makes a similar determination and finds Respondent’s attempt to pass itself off as Complainant to the casual Internet browser is evidence of bad faith registration and use under Policy ¶4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant further claims Respondent registered and uses the <topfossil.com> domain name with actual notice of Complainant’s rights in the FOSSIL mark. As Respondent uses the disputed domain name to offer counterfeit products under Complainant’s FOSSIL mark and provides a news feed relating to Complainant, the Panel determines that there is sufficient evidence Respondent had actual notice of Complainant’s mark, which also evidences bad faith registration and use pursuant to Policy ¶4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Inserting a line in the FAQ section of the <topfossil.com> web site that these items are replicas sold for novelty purposes only does not give Respondent any rights, especially in light of Respondent’s use of photographs from Complainant’s web site without any kind of attribution. Taken as a whole, Respondent’s web site intentionally trades on Complainant’s mark.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <topfossil.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: August 23, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page