national arbitration forum

 

DECISION

 

Fossil, Inc. v. wang cheng zhong / wang chengzhong

Claim Number: FA1209001464828

 

PARTIES

Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is wang cheng zhong / wang chengzhong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <fossil-handbags.net>, registered with Hang Zhou E-Business Services Co.Ltd.

 

PANEL

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 27, 2012; the National Arbitration Forum received payment on September 27, 2012.  The Complaint was received in English and Chinese.

 

On September 27, 2012, Hang Zhou E-Business Services Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <fossil-handbags.net> domain name is registered with Hang Zhou E-Business Services Co. Ltd. and that Respondent is the current registrant of the name.  Hang Zhou E-Business Services Co. Ltd. has verified that Respondent is bound by the Hang Zhou E-Business Services Co. 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 October 2, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 22, 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@fossil-handbags.net.  Also on October 2, 2012, the Chinese language 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

          Complainant made the following contentions.

    1. Complainant is the owner of numerous proprietary marks used in connection with handbags, watches, jewelry, fashion accessories, leather goods and clothing, and other related goods and services.
    2. Complainant owns several trademark registrations for its FOSSIL mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,582,547 registered Feb. 13, 1990) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 723888 registered Jan. 7, 1995).  See Complainant’s Exhibit B.
    3. Respondent registered the <fossil-handbags.net> domain name on June 5, 2012.  The <fossil-handbags.net> domain name is confusingly similar to Complainant’s FOSSIL mark, only adding a hyphen, the generic term “handbags,” and the generic top-level domain (“gTLD”) “.net.” 
    4. Respondent has no rights or legitimate interests in respect of the domain name.
    5. The WHOIS information identifies the registrant of the disputed domain name as “wang cheng zhong / wang chengzhong” and Respondent is not commonly known by the <fossil-handbags.net> domain name, is not affiliated with Complainant, and has not been licensed to use Complainant’s mark in any way.
    6. Respondent uses the disputed domain name to resolve to a website which features Complainant’s marks and logo while advertising what purport to be FOSSIL branded products for sale.  Such use 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). 
    7. Respondent is also using a confusing website scheme, Complainant’s marks and logo, and a copyright notice which states, “Fossil Handbags – Powered by Fossil” in an attempt to pass itself off as Complainant.  Complainant has received complaints from customers who ordered but never received any products from Respondent’s website who believed that they were buying products from Complainant.  Respondent’s attempt to pass itself off as Complainant is also 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). 
    8. The domain name has been registered and is being used in bad faith.
    9. Respondent is using the disputed domain name to confuse Internet users into believing that they are at a sales website sponsored by or run by Complainant where Respondent advertises Complainant’s products for sale without authorization to do so.  Respondent is commercially gaining from the confusion it has caused with Complainant’s mark and has therefore registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iv).
    10. Based upon Complainant’s extensive trademark registrations and Respondent’s use of the disputed domain name to advertise products under the FOSSIL mark, it is clear that Respondent had actual knowledge of Complainant’s rights in the mark.  Respondent’s registration and use of the disputed domain name despite such knowledge is evidence of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

 

FINDINGS

 

1.   Complainant is a United States company that supplies prestigious goods such as clothing and accessories under its FOSSIL trademark.

2.    Complainant owns several trademark registrations for its FOSSIL mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,582,547 registered Feb. 13, 1990) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 723888 registered Jan. 7, 1995).

3.    Respondent registered the <fossil-handbags.net> domain name on June 5, 2012. The domain name resolves to a website which features Complainant’s marks and logo while advertising what purport to be FOSSIL branded products for sale, although on occasions goods that have been bought from the website have not been delivered.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS

 

The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. 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.

 

DISCUSSION

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it is the owner of numerous proprietary marks used in connection with handbags, watches, jewelry, fashion accessories, leather goods and clothing, and other related goods and services.  Complainant notes that it owns several trademark registrations for its FOSSIL mark with the USPTO (e.g., Reg. No. 1,582,547 registered Feb. 13, 1990) and the SAIC (e.g., Reg. No. 723888 registered Jan. 7, 1995), among many others.  See Complainant’s Exhibit B.  The Panel finds that Complainant’s various and extensive trademark registrations and particularly those with the USPTO and SAIC, are sufficient for Complainant to have established its rights in the FOSSIL mark under Policy ¶ 4(a) (I).  See Digit-Key Corp. v. Bee jingo ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a) (i).”).

 

The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FOSSIL mark. Complainant argues the <fossil-handbags.net> domain name is confusingly similar to Complainant’s FOSSIL mark, only adding a hyphen, the generic term “handbags,” and the gTLD “.net.”  Complainant notes that the addition of a gTLD has been found to be irrelevant under Policy ¶ 4(a) (i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis).  Further, Complainant asserts that the addition of a generic term and a hyphen is not sufficient to distinguish the disputed domain name from Complainant’s mark.  The Panel notes that the term “handbags” is actually descriptive of Complainant’s products marketed under its FOSSIL mark.  In either case, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a) (i).  See 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); see also 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). 

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established 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) and then 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 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a) Respondent has chosen to take Complainant’s FOSSIL trademark and to use it  in its domain name, merely adding the generic word “handbags” to the trademark, thereby strengthening the confusing similarity between the domain name  and the trademark;

(b) Respondent has then decided to use the domain name to sell goods by giving the false impression that the domain name leads to an official website of Complainant and offering FOSSIL goods for sale when in fact such website is not authorized and on occasions the goods that the buyers thought they were buying have not been delivered;

(c) Respondent has engaged in these activities without the consent or approval

of Complainant;

(d) Complainant contends that the WHOIS information identifies the registrant of the disputed domain name as “wang cheng zhong / wang chengzhong” and Respondent is not commonly known by the <fossil-handbags.net> domain name, is not affiliated with Complainant and has not been licensed to use Complainant’s mark in any way.  The Panel accepts this submission and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);  See 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);

(e) Complainant also contends that Respondent uses the disputed domain name to resolve to a website which features Complainant’s marks and logo while advertising what purport to be FOSSIL branded products for sale.  Complainant requests the Panel to find that using the disputed domain name to sell products purporting to be Complainant’s 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 agrees and makes such a finding under Policy ¶ 4(a) (ii).  See 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.”);

(f) Complainant further asserts that Respondent is also using a confusing website scheme, Complainant’s marks and logo and a copyright notice which states, “Fossil Handbags – Powered by Fossil,” in an attempt to pass itself off as Complainant.  Complainant notes that it has received complaints from customers who ordered but never received any products from Respondent’s website and who believed that they were buying products from Complainant.  Complainant argues that Respondent’s attempts to pass itself off as Complainant is also 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 agrees and finds accordingly.  See Nokia Corp.  v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶ 4(c) (iii)).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent is using the disputed domain name to confuse Internet users into believing that they are at a sales website sponsored by or run by Complainant where Respondent advertises Complainant’s products for sale without authorization to do so.  Complainant contends that Respondent is commercially gaining from the confusion it has caused with Complainant’s mark and has therefore registered and is using the disputed domain name in bad faith under Policy ¶ 4(b) (iv).  The Panel finds that Respondent’s registration and use of the disputed domain name to advertise Complainant’s products, while using a confusing website scheme and Complainant’s marks and logos on the resolving website, is evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b) (iv).  See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).

 

Secondly, Complainant argues that based upon Complainant’s extensive trademark registrations and Respondent’s use of the disputed domain name to advertise products under the FOSSIL mark, it is clear that Respondent had actual knowledge of Complainant’s rights in the mark.  Complainant asserts that Respondent’s registration and use of the disputed domain name despite such knowledge is evidence of bad faith.  The Panel agrees and finds that the circumstances surrounding the registration and use of the <fossil-handbags.net> domain name indicate that Respondent had actual knowledge of the FOSSIL mark and Complainant’s rights therein, prior to Respondent’s registration of the disputed domain name.  The Panel finds such knowledge to be evidence of Respondent’s bad faith under Policy ¶ 4(a) (iii).  See 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).

 

Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FOSSIL mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <fossil-handbags.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  October 31, 2012

 

 

 

 

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