Tissot SA v. zhang hua
Claim Number: FA1111001417282
Complainant is Tissot SA (“Complainant”), represented by David Ewen of Collen IP, Intellectual Property Law, P.C., New York, USA. Respondent is zhang hua (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tissotwatchshop.com>, registered with Hichina Zhicheng Technology Ltd.
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 November 28, 2011; the National Arbitration Forum received payment on December 6, 2011. The Complaint was received in both Chinese and English.
On December 7, 2011, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <tissotwatchshop.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology Ltd. 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 December 13, 2011, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of January 3, 2012 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@tissotwatchshop.com. Also on December 13, 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 January 10, 2012, 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.
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 that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tissotwatchshop.com> domain name is confusingly similar to Complainant’s TISSOT mark.
2. Respondent does not have any rights or legitimate interests in the <tissotwatchshop.com> domain name.
3. Respondent registered and used the <tissotwatchshop.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tissot SA, uses the TISSOT mark in connection with the sale of watches and other horological and chronometric instruments for more than 155 years. Complainant owns several trademark registrations for its mark, including those with the United States Patent and Trademark Office ("USPTO") and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) as follows:
USPTO
TISSOT Reg. No. 1,639,684 registered April 2, 1991;
TISSOT HIGH-T Reg. No. 3,008,982 registered October 25, 2005;
TISSOT T-RACE Reg. No. 3,174,750 registered November 21, 2006;
OHIM
TISSOT Reg. No. 225,698 registered November 12, 1998;
TISSOT VELOCI-T Reg. No. 1,008,959 registered May 27, 2009;
TISSOT COUTURIER Reg. No. 1,008,960 registered May 27, 2009; &
TISSOT ATLAN-T Reg. No. 1,011,255 registered June 18, 2009.
Respondent, zhang hua, registered the <tissotwatchshop.com> domain name on August 31, 2011. Respondent’s domain name resolves to a website that copies the look and feel of Complainant’s official online store and appears to sell Complainant’s goods.
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.
The Panel finds that Complainant has presented sufficient evidence of its trademark registrations to establish rights in its marks under Policy ¶ 4(a)(i).
Previous panels, in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), and Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005), found that a complainant’s trademark registrations around the world are sufficient for it to establish Policy ¶ 4(a)(i) rights in its asserted mark. Further, the panels in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), and Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), found that complainant need not own a trademark registration in the country of respondent to establish rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <tissotwatchshop.com> domain name contains Complainant’s entire mark while adding the generic and descriptive terms “watch” and “shop,” insufficient to distinguish the disputed domain name from Complainant’s TISSOT mark. Panels in Novell, Inc. v. Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003), and Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), found that adding terms to a mark in the domain name that are directly related to complainant’s business does not go far enough to distinguish the domain name from the mark. Adding the gTDL does not help, as all domain names must have a gTDL. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), and Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002), have found that the addition of a generic top-level domain (“gTLD”) such as “.com” is irrelevant to this analysis. Therefore, the Panel finds that the <tissotwatchshop.com> domain name is confusingly similar to Complainant’s TISSOT mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights and legitimate interests in the <tissotwatchshop.com> domain name. Pursuant to Policy ¶ 4(a)(ii), Complainant is required to make a prima facie case in support of these allegations. The panels in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), found that when the complainant establishes a prima facie case in support of its assertions, the burden of proof shifts to Respondent to establish rights and legitimate interests in the domain name at issue. The Panel finds that Complainant has produced a prima facie case, but Respondent has not submitted a Response in this matter. The panels in Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), found that a respondent that does not respond is presumed to lack rights or legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant argues that Respondent is neither commonly known by the <tissotwatchshop.com> domain name nor has Complainant given Respondent permission to use the TISSOT mark. The WHOIS information identifies “zhang hua” as the registrant of the <tissotwatchshop.com> domain name, and there is no other evidence on record that Respondent is commonly known by the disputed domain name. The panels in IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), found that where a respondent was neither authorized to use the mark at issue nor appeared to be commonly known by the disputed domain name, such a respondent lacks rights and legitimate interests in the domain name at issue. This Panel similarly finds here that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s domain name resolves to a website that mimics the look and feel of Complainant’s official website. Respondent’s website displays Complainant’s watches and other goods as though it is actually Complainant. Complainant contends that it has never authorized such use of its marks and that there is no disclaimer on the website. It appears from the prices that are listed in association with pictures of watches, as well as the “shopping cart” featured on the website, that Respondent is selling the goods advertised. The panels in Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003), and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001), found that selling a complainant’s goods without authorization, as well as others’ goods, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel here also finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent is using the disputed domain name to present Internet users with a website that copies the look and feel of Complainant’s official website. Respondent advertises and sells Complainant’s goods in a way that makes Respondent appear to be Complainant. The Panel finds that Respondent is attempting to pass itself off as Complainant in order to sell goods, further evidence of Respondent’s lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See 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); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant does not make specific arguments under Policy ¶ 4(b). However, the Panel finds that the evidence submitted by Complainant supports findings under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Under Policy ¶ 4(b)(iii), bad faith registration and use may be found where a domain name has been registered and used to disrupt Complainant’s business and where Respondent is a competitor. In Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001), the panel found that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.” Here, Respondent advertises and appears to sell watches and other timepiece goods under Complainant’s mark without authorization to do so, thereby making Respondent a competitor to Complainant. In Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002), the panels found that the unauthorized use of a complainant’s mark to sell its goods without authorization is evidence of bad faith under Policy ¶ 4(b)(iii). The Panel here finds the same.
Policy ¶ 4(b)(iv) states that a respondent may be found to have registered and used the domain name in bad faith where it registered the domain name to create confusion with a complainant’s mark in order to realize a financial gain. The panels in Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000), and Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003), found bad faith under Policy ¶ 4(b)(iv) where the respondents were using the domain names to sell the complainant’s goods without authorization. Here, Respondent is using the disputed domain name, which is confusingly similar to Complainant’s mark, in order to attract consumers to the resolving website, create confusion as to the affiliation or sponsorship of the website, and sell Complainant’s watch products without authorization. The Panel finds that such use falls squarely within Policy ¶ 4(b)(iv) and is therefore evidence of registration and use of the domain name in bad faith.
Passing off is itself evidence of Respondent’s bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Lastly, Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends that, given the content of the resolving website which prominently displays Complainant’s products and trademarks, Respondent must have had knowledge of Complainant and its rights in the TISSOT marks. Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the panels in Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002), andYahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006), found that the circumstances of a respondent’s usage of the mark in question can indicate actual knowledge of complainant and its rights in the mark, thereby leading to a finding of bad faith under Policy ¶ 4(a)(iii). The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii) because it had actual knowledge of Complainant’s rights in the TISSOT mark prior to registering the domain name.
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tissotwatchshop.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 17, 2012
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