Suunto Oy Corporation v. Bob Smith
Claim Number: FA1110001412957
Complainant is Suunto Oy Corporation (“Complainant”), represented by Jeffery A. Key of Key & Associates, Illinois, USA. Respondent is Bob Smith (“Respondent”), represented by Henry Wineman of Frasco Caponigro Wineman & Scheible, PLLC, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <suuntowatches.com> and <suunto-watches.com>, registered with GoDaddy.com, 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.
Hugues G. Richard 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 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <suuntowatches.com> and <suunto-watches.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.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 October 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 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@suuntowatches.com and postmaster@suunto-watches.com. Also on October 31, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on November 22, 2011.
An Additional Submission of the Complainant was filed on November 28, 2011, and it was determined to be timely.
An Additional Submission of the Respondent was filed on December 5, 2011, and it was determined to be timely.
On November 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions include the following arguments with regards to Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i):
Complainant alleges that the domain names <suuntowatches.com> and <suunto-watches.com> (the “Disputed Domain Names”) are identical and/or confusingly similar to U.S. Trademark Registration Nos. 3514815, 3514814, 2437646, 2424292, and 1036637, owned by Complainant. Complainant submits that it has not authorized Respondent to use Complainant Suunto Oy’s trademarks in its domain names.
The domain names <suuntowatches.com> and <suunto-watches.com> contain the identical trademark “SUUNTO” (registration nos. 2437646, 2424292, and 1036637), owned by Complainant. SUUNTO is the initial and primary element of the domain names <suuntowatches.com> and <suunto-watches.com>. The appearance, sound and connotation of this primary element, SUUNTO, and Complainant’s registered mark, SUUNTO, are identical.
Complainant further argues that the remaining portion of Respondent’s domain names, “WATCHES” and “-WATCHES”, are descriptive of the goods that Respondent sells, and are the same goods covered by Complainant’s trademark registrations. In addition, “watches” are the goods that Complainant designs, manufactures, and sells. The watches sold by Respondent through the domain names, <suuntowatches.com> and <suunto-watches.com>, are identical in appearance to those designed, manufactured, and sold by Complainant.
Complainant’s contentions include the following arguments with regards to Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii):
In the view of Complainant, Respondent should be considered as having no rights or legitimate interests in respect of the domain names, <suuntowatches.com> and <suunto-watches.com> , seeing that no express or implied license has ever been granted to Respondent for Complainant’s trademarks or copyrighted images in its domain names or on its websites. In addition, Respondent is not, and has never been, an authorized seller or distributor of Complainant’s “SUUNTO” branded products. Furthermore, to Complainant’s knowledge, Respondent has no inventory of genuine Suunto Oy products, and Complainant submits that Respondent may be selling counterfeit Suunto Oy products. According to Complainant, Respondent has never been authorized to sell or distribute Suunto Oy products.
Complainant alleges that Respondent has never been known as or associated with Complainant’s registered mark “SUUNTO,” and that Respondent has not been known by the domain name <suuntowatches.com> or <suunto-watches.com>.
Complainant further claims that Respondent is attempting to obtain a commercial advantage by misleadingly diverting consumers to the <suuntowatches.com> or <suunto-watches.com> domains through false press releases, which use Complainant’s registered trademarks, and which redirect consumers from one of Complainant’s domains, <movescount.com>, to Respondent’s domain.
The press releases deceptively use Complainant’s registered marks to announce product launches by Respondent. Respondent is attempting to redirect consumers who are seeking access to Complainant's sites, in order to mislead and divert customers from Complainant’s and its authorized distributors’ sites to those of Respondent. According to Complainant, Respondent’s use of the domain names is strictly commercial, and does not constitute fair use of the domain names.
Complainant’s contentions include the following arguments with regards to Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii):
Complainant argues that Respondent has intentionally attempted to attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with Complainant’s registered marks with respect to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s use of Complainant’s marks, as well as Respondent’s sale of Complainant’s goods (or counterfeit goods therefore) is entirely unauthorized.
Following issuance of Complainant’s cease and desist notice dated September 28, 2011, Respondent issued at least two confusing and deceptive online “press releases” that were drafted to look as though they were issued by Complainant, containing several active links to Respondent’s <suuntowatches.com> domain. In addition, the October 20, 2011 press release falsely announces that Respondent’s site, <suuntowatches.com>, has launched a new iPhone application. Complainant asserts that this iPhone application was in fact launched by Complainant. Respondent is falsely claiming ownership of Complainant’s new application by misusing Complainant’s registered marks, passing Respondent off as being Complainant, and by deceptively diverting the public to Respondent’s commercial site by falsely using Complainant’s <movescount.com> website to link to Respondent’s website, <suuntowatches.com>.
B. Respondent
Respondent’s position includes the following arguments with regards to Rule 3(b)(ix)(1); UDRP Policy ¶ 4(a)(i):
Respondent claims that Complainant has permitted Respondent and his partner, Bradley Sorock, to use the SUNNTO mark in the <suuntowatches.com> and <suunto-watches.com> domain names since 1999/2000, and to operate a corresponding website to sell Complainant’s products, conditioned upon Respondent maintaining a disclaimer on its website, indicating that said website is not owned by or affiliated with Complainant. Respondent alleges that it has maintained said disclaimer on its website at all relevant times, and that Complainant’s allegation that it “has not authorized any person named ‘Bob Smith’ to use Complainant Suunot Oy’s trademarks in his domain names” is false.
Respondent contends that, despite Complainant’s permission to Respondent to use Complainant’s trademark in the domain names for more than a decade, during which time Respondent developed and operated a website that has generated almost sixteen million dollars over the past decade, without complaint or objection, Complainant now seeks in bad-faith to revoke Respondent’s right in the domain names without any compensation to Respondent.
Respondent submits that Complainant knows or should know that press releases are used as a well-known search engine optimization (“SEO”) technique to establish references to company websites to establish maximized placement naturally on Google’s website. Complainant has been aware for more than a decade of Respondent’s SEO investment in the domains and has failed to object to or otherwise complain about, until now, including, but not limited to, Respondent’s use of press releases.
Additionally, for the past decade, Complainant has relied on third-parties, such as Respondent, to market and directly sell its products on the Internet.
Respondent’s position includes the following arguments with regards to Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii):
Complainant has permitted Respondent and its disclosed and known partner, Bradley Sorock, to use the SUUNTO mark in the <suuntowatches.com> and <suunto-watches.com> domain names since 1999/2000 via Henry Syvanen. Thereafter, in August of 2001, Respondent and Bradley Sorock created Niche Retail, LLC (“Niche”), to manage the <suuntowatches.com> website. Niche managed the website from approximately 2001 through August of 2011, maintained an inventory of Complainant’s products and transacted millions of dollars in direct consumer sales through the website, with the knowledge and consent of Complainant, who directly benefited from the website.
Respondent admits that Niche closed its operations in August of 2011. Respondent and his partner allegedly continue to operate the website as a permitted affiliate of Amazon.com. According to Respondent, this affiliate structure is similar, in kind and/or the same as other permitted affiliate sites presently operating on the Internet, using Complainant’s mark in their domain names.
In light of the factual history of Respondent’s website, Respondent’s use of Complainant’s mark is a legitimate fair use of the domain names. Prior to 2011, Complainant maintained no website for direct Internet sales to consumers, and therefore, any complaints of misleadingly diverting consumers prior to 2011 are unfounded. Moreover, Respondent’s use of Complainant’s mark benefited Complainant for over a decade. Complainant continues to benefit from Respondent’s use of the domains as an affiliate site of Amazon.com
Respondent’s position includes the following arguments with regards to Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii):
Respondent submits that there is no allegation or evidence of any cybersquatting by Respondent, or that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
Respondent further submits that is has not registered the domain names in order to prevent Complainant, as the owner of the SUUNTO mark, from reflecting such mark in a corresponding domain name, and there is no evidence that Respondent has engaged in a pattern of such conduct.
C. Additional Submissions
Complainant’s Additional Submissions include the following:
Complainant reasserts that it never granted a license or other permission to the individual Bob Smith or to his partner Bradley Sorock for the use of Complainant’s SUUNTO trademarks.
Complainant submits that it is the sole owner of its trademarks, and may terminate a license at will. Even if it assumed that Complainant had given an implied license to Niche to use Complainant’s SUUNTO trademarks for a period of time, such a license was strictly limited to Niche, and was terminable at will by Complainant. An implied license to Niche ended and was terminated when Niche went out of business, as admitted by Respondent.
Complainant argues that Respondent’s assertion of permission from Amazon.com is irrelevant to these proceedings, since Amazon cannot give permission to use the Disputed Domain Names.
Complainant also references case law from the United States, stating that it is well settled law that the owner of a trademark may terminate any implied license by providing notice of termination, and that a license containing no time frame is terminable at will by the owner of the trademark. Complainant’s express notice to Respondent that Respondent had no permission to use Complainant’s trademarks was therefore sufficient to terminate any possible implied license Respondent may have enjoyed as an alleged former employee of Niche.
Complainant specifies that it never granted a license to any individual, including Respondent or his partner Bradley Sorock, to use Complainant’s SUUNTO trademarks, and Respondent never asserts that Complainant granted any individual license to Respondent to do so. Respondent only asserted that permission was granted to Niche, and Respondent’s implication that Respondent and Bradley Sorock had permission to use the SUUNTO trademarks is false.
According to Complainant, Respondent falsely asserts in its Response that Complainant is attempting a “reverse hijacking” of the Dispute Domain Names, because Complainant was seeking to start its own direct to consumer website. Respondent allegedly knows these statement are false, seeing that Niche’s president expressly acknowledged, in April of 2011, that Complainant was seeking to conduct direct to consumer sales through Complainant’s own website, <suunto-watches.com>. Complainant contends that it seeks to shut down the disputed domains, and does not seek to conduct business through them.
Respondent’s Additional Submissions include the following:
Respondent contends that Henri Synaven’s admission is clear: in and around 1999/2000 it was decided that Respondent could use the Disputed Domain Names conditioned upon Respondent maintaining a disclaimer on its website. According to Respondent, there is no evidence suggesting that this right was anything but continuous.
Respondent admits that Complainant is correct in that an implied license to use another’s mark is usually terminable at will. However, Respondent alleges that case law in the United States has determined that laches, plead by a respondent in his Response, may estop a complainant from asserting its rights in a mark in cases where: (1) there is a delay in asserting a right or claim; (2) the delay was not excusable; and (3) the delay caused the defendant undue prejudice.
Respondent claims that a finding of laches by estoppel should be granted, and the Complaint should be dismissed, seeing that Respondent has operated a website under the Disputed Domain Names for more than a decade with the express permission of Complainant. Respondent further contends that Complainant has provided no reasonable excuse for the delay in asserting its rights as to Respondent’s use of the SUUNTO mark in the Disputed Domain Names, and Respondent has shown that it will suffer tremendous prejudice caused by Complainant’s delay in asserting its rights.
Respondent considers that Complainant seeks to use Niche’s cessation of business operations to strip Respondent of its continuous permitted use of the Disputed Domain Names, despite the undisputed permission to use the domain names so long as Respondent maintained the disclaimer.
On October 25, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <suuntowatches.com> and <suunto-watches.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.
Complainant owns the SUUNTO word marks with U.S. Trademark Registration Nos. 3514815, 3514814, 2437646, 2424292, and 1036637.
Henri Syvanen, former president of Suunto USA, states in his e-mail sent to Bradley Sorock’s company e-mail address (brad@nicheretail.com) on October 31, 2011, that the domain name was registered without the authorization of Complainant and that Complainant originally disapproved of this registration. It reluctantly agreed to tolerate the registration after business operations had started, under the condition that a disclaimer on the site mentions that “<suuntowatches.com> is not affiliated to Suunto at all, that the <suuntowatches.com> store has a different owner than Suunto.”
Jeff Grice, president of Niche, stated in his e-mail sent to Michael Pinckes of Secure-24 Inc. (Niche’s web-hosting company) on August 1, 2011, that it was announced in June of 2011 that Niche would be closing, and that “the plan is to finish liquidating this month. After August we will no longer need the hosting environment due to the closing of the company.”
Bradley Sorock confirmed in his e-mail to Noral Stowell and Jeff Grice on June 17, 2011, that “we have removed the contact info from the site….http://www.suuntowatches.com/customer-service […] I totally get that you’re getting calls and can’t really answer questions that you don’t have answers [to]. I would definitely be telling them that we are a retailer and we’re closing our doors. Sales are final, and there are no back orders.” He also confirms that it is an unfortunate part of winding down a business.
The parties have made no distinctions between the outcomes, which should be given to each domain name at issue. They have dealt with the two domain names as if they were one. The Panel will therefore decide this case accordingly, without making any distinctions between the two Disputed Domain Names.
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."
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, Suunto Oy Corporation (“Suunto Oy”), demonstrates that it makes watches under the SUUNTO mark, and provides evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SUUNTO mark (e.g., Reg. No. 1,036,637 registered March 30, 1976). Past panels have concluded that the registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)). Based on this precedent, the Panel holds that Complainant owns rights in its SUUNTO mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <suuntowatches.com> and <suunto-watches.com> domain names are confusingly similar to Complainant’s SUUNTO mark. The Panel notes that the Disputed Domain Names contain Complainant’s entire SUUNTO mark, the descriptive term “watches,” and the generic top-level domain (“gTLD”) “.com.” The <suunto-watches.com> domain name also includes a hyphen. Prior panels have found that the addition of a descriptive term does not sufficiently distinguish a disputed domain from a complainant’s mark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Previous panels have also concluded that the additions of a hyphen and a gTLD are not relevant to a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). In applying UDRP precedent to this case, the Panel concludes that Respondent’s <suuntowatches.com> and <suunto-watches.com> domain names are confusingly similar to Complainant’s SUUNTO mark under Policy ¶ 4(a)(i).
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie case showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <suuntowatches.com> and <suunto-watches.com> domain names. Complainant argues that Respondent is not licensed by Complainant to use Complainant’s SUUNTO mark. Complainant also argues that Respondent is not an authorized distributor of Complainant’s products. Complainant admits that the previous operator of the Disputed Domain Names, Niche Retail, LLC (“Niche”) was an authorized distributor of Complainant’s watches, but Complainant provides evidence demonstrating that in June of 2011, the founder of Niche notified Complainant that Niche was going out of business. Complainant provides evidence that Niche notified Complainant that the Disputed Domain Names were both decommissioned as of August 31, 2011. The WHOIS information identifies the current registrant of the <suuntowatches.com> and <suunto-watches.com> domain names as “Bob Smith,” and Complainant alleges that it never entered into a distribution agreement with “Bob Smith.” Prior panels have found that a respondent is not commonly known by a disputed domain name if the complainant has not authorized the respondent to use the complainant’s mark and the WHOIS information is not similar to the disputed domain name. 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name, as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). The Panel finds accordingly under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent uses the <suuntowatches.com> and <suunto-watches.com> domain names to resolve to websites that purport to be Complainant’s website. Complainant claims that Respondent sells either unauthorized or counterfeit versions of Complainant’s watch products. Complainant alleges that Respondent has published false press releases related to Complainant’s products and referencing the Disputed Domain Names.
Respondent does not establish that Complainant authorized Respondent to sell Complainant’s watch products, nor does Respondent establish that Complainant authorized Respondent to use Complainant’s SUUNTO mark. Respondent simply establishes that permission was granted to use the <suuntowatches.com> domain during the time Niche carried on business, under the condition that a disclaimer remain posted on the website stating that the site is not affiliated to Suunto Oy. This permission lasted for approximately ten years, until Niche announced that it was going out of business.
As soon as Complainant realized that Respondent had taken over the operations of the website from Niche, it gave notice to Respondent to cease and desist from doing so. There were no laches in seeking redress.
Prior panels have held that a respondent’s attempt to pass itself off as the complainant, as well as the sale of counterfeit or unauthorized versions of the complainant’s products are both evidence of no bona fide offering of goods or services or no legitimate noncommercial or fair use of a domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); 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). Thus, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <suuntowatches.com> and <suunto-watches.com> domain names.
Respondent asserts that it offers a disclaimer that disassociates the Disputed Domain Names from Complainant. Previous panels have found that a disclaimer is not enough by itself for a respondent to establish rights and legitimate interests in a domain name. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that an addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). Consequently, the Panel disregards the alleged disclaimer under Policy ¶ 4(a)(ii) and finds that it does not support any rights or legitimate interests on the part of Respondent.
While Complainant does not specifically allege bad faith registration and use under Policy ¶ 4(b)(iii), prior panels have determined that a respondent registered and uses a disputed domain name in bad faith when the resolving website sells Complainant’s goods without authorization from Complainant. 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 claims that Respondent is not, and has never been, an authorized distributor of Complainant. Complainant avers that Respondent did not become an authorized distributor in the place of Niche. Complainant argues that Respondent either sells unauthorized or counterfeit versions of Complainant’s watches. Based on these claims and the appropriate UDRP precedent, the Panel concludes that Respondent registered and uses the <suuntowatches.com> and <suunto-watches.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii), as the competing sale of Complainant’s products without authorization disrupts Complainant’s business.
Complainant does claim that Respondent is intentionally attempting to attract, for commercial gain, Internet users to the resolving website by creating confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website. As noted above, Complainant contends that Respondent sells unauthorized or counterfeit versions of Complainant’s watches on the websites resolving from the <suuntowatches.com> and <suunto-watches.com> domain names. Complainant demonstrates that Respondent has posted two false press releases appearing to be posted by Complainant and referencing the Disputed Domain Names. Complainant argues that Respondent’s registration of the confusingly similar domain names and the posting of the two fake press releases demonstrate that Respondent is attempting to create confusion as to Complainant’s affiliation with the domain name.
Complainant asserts that Respondent profits from this confusion by selling the unauthorized or counterfeit watches. In similar situations, past panels have found bad faith registration and use under Policy ¶ 4(b)(iv). 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 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).
Therefore, the Panel concludes that Respondent is responsible of bad faith registration and use according to Policy ¶ 4(b)(iv).
While Respondent claims that it offers a disclaimer on the resolving websites, past panels have found that a disclaimer does not prevent a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel finds accordingly.
Furthermore, the evidence (Exhibit 1 of the Response) establishes that when the first domain name was registered, whoever registered the domain name did not receive prior authorization from Complainant to do so.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <suuntowatches.com> and <suunto-watches.com> domain names be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: December 13, 2011
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