Fossil, Inc. v. FM c/o Wan Mad
Claim Number: FA1110001412956
Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is FM c/o Wan Mad (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilmalaysia.com>, registered with eNom.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 October 25, 2011; the National Arbitration Forum received payment on October 25, 2011.
On October 27, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <fossilmalaysia.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 October 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@fossilmalaysia.com. Also on October 28, 2011, the 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 November 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fossilmalaysia.com> domain name is confusingly similar to Complainant’s FOSSIL mark.
2. Respondent does not have any rights or legitimate interests in the <fossilmalaysia.com> domain name.
3. Respondent registered and used the <fossilmalaysia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fossil, Inc., offers watches, jewelry, clothing, leather goods, sunglasses, fashion accessories, and footwear. Complainant holds numerous registrations for the FOSSIL mark in jurisdictions throughout the world, including in Malaysia, where Respondent resides, with the Intellectual Property Corporation of Malaysia (Reg. No. 92/02742 registered April 13, 1994).
Respondent, Wan Mad, registered the disputed domain name on March 17, 2011. The disputed domain name resolves to a website selling what purport to be Complainant’s products, as well as products made by third-party manufacturers.
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 claims rights in the FOSSIL mark based on its registration of the mark with numerous federal trademark authorities, including the Intellectual Property Corporation of Malaysia (Reg. No. 92/02742 registered April 13, 1994). The Panel finds that Complainant’s registration of the FOSSIL mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <fossilmalaysia.com> domain name is confusingly similar to its FOSSIL mark under Policy ¶ 4(a)(i). The disputed domain name includes Complainant’s mark, the geographic identifier “malaysia,” and the generic top-level domain (“gTLD”) “.com.” Adding the geographic identifier “malaysia” is not sufficient to distinguish the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“. . . it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Additionally, the inclusion of a gTLD has no effect on the determination of whether a domain name is confusingly similar to Complainant’s mark. 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). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). In this case, Complainant has satisfied its burden, while Respondent has not. Some panels have viewed this as per se evidence that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). This Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <fossilmalaysia.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant also states that Respondent is not affiliated with Complainant’s business in any way and has not been licensed by Complainant to use the FOSSIL mark. The WHOIS information identifies the domain name registrant as “Wan Mad,” which bears no similarity to the <fossilmalaysia.com> domain name. Respondent has failed to submit any evidence that it is commonly known as the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant further alleges that Respondent’s use of the disputed domain name to sell what purport to be Complainant’s products, as well as products made by third-party manufacturers, 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). Past panels have found that Respondent’s use of a confusingly similar domain name to divert Internet users to its own website of this sort does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant); see also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). The Panel finds that Respondent’s use of the disputed domain name 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name in connection with the sale of Complainant’s goods demonstrates registration and use of the disputed domain name in bad faith under Policy ¶ 4(b)(iii). Respondent’s operation at a confusingly similar domain name increases the likelihood that visitors to Respondent’s website originally intended to visit a website operated by Complainant. When these visitors purchase products from Respondent’s site, it deprives Complainant of a potential sale. Panel finds Respondent’s registration and use of the disputed domain name constitute bad faith disruption 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).”)
Complainant contends that Respondent’s registration and use of the disputed domain name exhibits bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). Respondent’s selection of a confusingly similar domain name demonstrates intent to deceive or mislead consumers as to Complainant’s affiliation with the site. Respondent seeks to benefit from the goodwill that Complainant’s mark has garnered, hoping that its use of Complainant’s mark will result in increased sales. Previous panels have found bad faith where a Respondent attempts to commercially benefit from creating this type of confusion. See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). The Panel finds that Respondent’s registration and use of the disputed domain name exhibits bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the FOSSIL mark. While constructive notice by itself has not been generally held to suffice for a finding of bad faith registration and use, the Panel finds that Respondent had actual notice of Complainant’s trademark rights, and therefore registered and is using the disputed domain name in bad faith under 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).
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 <fossilmalaysia.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 29, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page