Fossil, Inc. v. Juan Cabral
Claim Number: FA1211001469662
Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Juan Cabral (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossil-outlet.com>, registered with 1&1 Internet AG.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2012; the National Arbitration Forum received payment on November 2, 2012.
On November 12, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <fossil-outlet.com> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 November 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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@fossil-outlet.com. Also on November 12, 2012, 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.
Respondent submitted a timely Response on December 2, 2012.
Complainant submitted a timely Additional Submission on December 3, 2012.
On December 17, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant is the owner of numerous marks used in connection with handbags, watches, jewelry, leather goods, clothing, and other accessories.
2. Complainant owns numerous registrations for the FOSSIL mark with the United States Patent and Trademark Office (“USPTO”), including:
Reg. No. 2,001,920 registered Sept. 17,1996;
Reg. No. 3,229,777 registered April 17, 2007;
Reg. No. 3,293,475 registered Sept. 18, 2007;
Reg. No.1,467,255 registered Dec. 1, 1987;
Reg. No. 2,599,215 registered July 23, 2002; and
Reg. No. 1,708,103 registered Aug. 18, 1992.
3. Complainant’s FOSSIL mark was first used in commerce as early as 1985, and was used continuously thereafter.
4. Respondent registered its <fossil-outlet.com> domain name on August 8, 2011.
5. Respondent’s <fossil-outlet.com> domain name is confusingly similar to Complainant’s FOSSIL mark.
6. Respondent’s <fossil-outlet.com> domain name contains Complainant’s FOSSIL mark in full, with the addition of a hyphen and the generic term “outlet as well as adding the generic top-level domain “.com.”
7. Respondent has no rights or legitimate interests in the <fossil-outlet.com> disputed domain name.
8. Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use.
9. The WHOIS information for Respondent lists the registrant as “Juan Cabral.”
10. Respondent is not commonly known by Complainant’s FOSSIL mark.
11. Respondent’s <fossil-outlet.com> domain name resolves to a page attempting to look like Complainant’s legitimate site.
12. Respondent took Complainant’s FOSSIL mark in order to mislead and divert Internet users to its website for commercial gain.
13. Respondent is attempting to pass itself off as Complainant through its <fossil-outlet.com> domain name.
14. Respondent registered and is using the <fossil-outlet.com> domain name in bad faith.
15. Respondent is intentionally attempting to attract, for commercial gain, internet users by creating a likelihood of confusion with Complainant’s FOSSIL mark as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant.
16. Respondent had knowledge of Complainant’s rights in the FOSSIL mark when it registered the <fossil-outlet.com> domain name.
B. Respondent
Respondent made the following contentions.
1. Respondent has only good intentions that are beneficial to visitors to the site.
2. Respondent’s website provides reviews for Complainant’s products.
3. Respondent’s website is not intended to come off as an official site by Complainant.
4. Respondent is a fan of Complainant and Complainant’s products.
5. Respondent’s site features a disclaimer on the home page explaining its purpose as merely a review affiliate site.
6. Respondent purchased the <fossil-outlet.com> domain name to review Complainant’s products, not to hold itself out as Complainant.
7. Respondent is willing to change any information in the page that is harming Complainant.
8. Customers deserve to have access to reviews of Complainant’s products.
C. Complainant’s Additional Submission
Complainant made the following further contentions.
1. It is evident that Respondent was served with the Complaint and prior to responding, removed the Fossil logo and the copyright notice that said “Fossil Outlet” as shown. However, the home page of Respondent’s website still appears to look like the official Fossil Outlet.
2. The “Disclaimer” that Respondent relies on appears only
on the bottom of a separate page when the user clicks on the “Disclaimer” link at the
bottom of the home page. (See Exhibit 1 hereto).
3. Even after these changes, there are no genuine indications of source at
Respondent’s web site other than Complainant’s famous trademarks.
4. Furthermore, disclaimers cannot alleviate the likelihood of initial and
subsequent confusion arising from adopting an identical name for directly competing goods and services.
5. These changes are not relevant to a determination of legitimate
interests because they occurred after Respondent was notified of the dispute.
6. Even if this disclaimer had been in place before Respondent received
notice, it would not avoid a finding of bad faith. See e.g., Target Brands,
Inc. v. Henderson, FA1109001408381 (Nat. Arb. Forum Oct 24, 2011).
7. At the time of registration of the domain name and up to the time of the
filing of the Complaint, Respondent was using the disputed domain name to sell what purport to be Fossil branded products using the official Fossil logo prominently on the site without any evidence that it was not the official Fossil outlet site.
8. After service of the Complaint, Respondent made some changes
by removing the logo but still uses the name FOSSIL OUTLET and the home page does not dispel any confusion that the domain name is the official Fossil outlet store.
9.Respondent’s argument that the site is a review site is simply not
credible.
10.From the time the domain name was registered in 2011 until the
Complaint was served in November of 2012, Respondent did not use the site as a review site but rather to sell what appear to be Fossil branded products
using Fossil’s trademarks and logos.
11. Respondent registered and has used the domain name to obtain
revenues for its own commercial gain through a domain name that includes the famous FOSSIL trademark which is likely to cause consumer confusion
1. Complainant is a prestigious and prominent United States company that supplies handbags, watches, jewelry, fashion accessories, leather goods and clothing as well as operating retail stores, including outlet stores that feature handbags, watches and related products.
2. Complainant is the owner of a series of trademarks for FOSSIL with respect jewelry, fashion accessories, leather goods and clothing and other related goods and services, through registration with the United States Patent and Trademarks Office ( ‘USPTO’), including the following:
Reg. No. 2,001,920 registered Sept. 17,1996;
Reg. No. 3,229,777 registered April 17, 2007;
Reg. No. 3,293,475 registered Sept. 18, 2007;
Reg. No.1,467,255 registered Dec. 1, 1987;
Reg. No. 2,599,215 registered July 23, 2002; and
Reg. No. 1,708,103 registered Aug. 18, 1992.
3. Respondent registered the <fossil-outlet.com> domain name on August 8, 2011. It is used by Respondent to lure consumers to its website by calling itself the Fossil Outlet Online Store, using the FOSSIL trademark and showing what appear to be FOSSIL branded goods at a site that is designed to look like an official FOSSIL owned site carrying, at the time the Complaint was filed, the well known FOSSIL Oval Logo. The site also contains a copyright notice that says “© 2011 Fossil Outlet” and contains links to the genuine Fossil Facebook pages and other pages in an attempt to make the site look legitimate. These representations falsely suggest that the site is the official online outlet store operated by or for Complainant where consumers may order products which may or may not be genuine 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."
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims it has rights in the FOSSIL mark through its registrations with the USPTO. Complainant provides evidence of its numerous registrations with the USPTO, which the Panel accepts, a few of which are:
Reg. No. 2,001,920 registered Sept. 17,1996;
Reg. No. 3,229,777 registered April 17, 2007;
Reg. No. 3,293,475 registered Sept. 18, 2007;
Reg. No.1,467,255 registered Dec. 1, 1987;
Reg. No. 2,599,215 registered July 23, 2002; and
Reg. No. 1,708,103 registered Aug. 18, 1992 (collectively ‘the FOSSIL mark’).
The trademarks are registered with respect to jewelry, fashion accessories, leather goods and clothing and other related goods and services. Complainant claims that its FOSSIL mark is famous and has been used for more than 25 years. Previous panels have found that evidence of a registration with a national trademark authority is evidence of rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Complainant has established rights in its FOSSIL 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 submits that Respondent’s <fossil-outlet.com> domain name is confusingly similar to Complainant’s FOSSIL mark. Complainant argues that the <fossil-outlet.com> domain name contains Complainant’s FOSSIL mark in its entirety with the addition of a hyphen and the generic term “outlet.” Complainant further argues that Respondent adds the generic top-level domain (“gTLD”) “.com.” Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a registered mark. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Based on Complainant’s evidence and contentions and previous UDRP decisions, the Panel finds that Respondent’s <fossil-outlet.com> domain name is confusingly similar to Complainant’s registered FOSSIL mark under Policy ¶ 4(a)(i). In particular, the addition of the word ‘outlet’ can only imply that the domain name is an official FOSSIL domain name leading to an official FOSSIL website in the nature of a retail outlet, neither of which is true.
Complainant has thus made out the first of the three elements that it must establish.
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 “outlet” 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 lure consumers to its website by calling itself the Fossil Outlet Online Store, using the FOSSIL trademark and showing what appear to be FOSSIL branded goods at a site that is designed to look like an official FOSSIL owned site carrying, at the time the Complaint was filed, the well known FOSSIL Oval Logo. Although the logo has since been removed, the website still carries the FOSSIL mark . The site also contains a copyright notice that says “© 2011 Fossil Outlet” and contains links to the genuine Fossil Facebook pages and other pages in an attempt to make the site look legitimate. These representations falsely suggest that the site is the official online outlet store operated by or for Complainant where consumers may order products which may or may not be genuine goods;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant argues that Respondent is not commonly known by Complainant’s FOSSIL mark. Complainant further claims it has not authorized or licensed Respondent to supply or distribute Complainant’s goods or services. Complainant also argues that the WHOIS information for Respondent lists “Juan Cabral” as registrant. Previous panels have found that when the WHOIS information lists a registrant that has no connection to Complainant or the disputed domain name and Complainant has not authorized Respondent to use the disputed domain name then this may indicate that Respondent is not commonly known by the disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also 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 that it is commonly known by the domain name). As the Panel finds this evidence sufficient it holds that Respondent is not commonly known by the <fossil-outlet.com> domain name according to Policy ¶ 4(c)(ii);
(e) Complainant claims that Respondent has no rights or legitimate interests in the <fossil-outlet.com> domain name as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent uses the <fossil-outlet.com> domain name to attract internet users to Respondent’s own site. Complainant further argues that Respondent is luring consumers to its website by entitling it the “Fossil Outlet Store” and featuring pictures of what appear to be Complainant’s products. Complainant submits that Respondent’s site is purposely designed to look like that of Complainant. Complainant points out that there is a copyright notice stating, “©2011 Fossil Outlet” as well as links including a link to Complainant’s genuine Facebook page as well as other links in an attempt to make Respondent appear as Complainant. Complainant also argues that Respondent is using the confusingly similar <fossil-outlet.com> domain name to attract consumers to its site for commercial gain. Complainant further argues that Respondent is passing itself off as Complainant through the appearance of Respondent’s website and the information it features. Previous panels have found that these uses are not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policies ¶¶ 4(c)(i) and 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (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 . . . .”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”) Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <fossil-outlet.com> domain name because it is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. Respondent has filed a Response designed to rebut the prima facie case against it and the Panel will therefore examine the Response and the evidence submitted with it to see if Respondent has rebutted the prima facie case against it.
Having examined the Response and the evidence, the Panel concludes that Respondent has not rebutted the prima facie case against it. That is so for the following reasons.
Respondent relies on a submission to the effect that it is a fan of Complainant and that its intention and the purpose of its website is to conduct reviews of Complainant’s products which is of value to Complainant and potential purchasers. In substance therefore Complainant submits that it is a fan or review site. The Panel does not accept that submission. As Complainant submits, it is simply not credible and the evidence does not support it.
It is true that if a website is a fan or tribute site or a site given over to reviews or commentary on goods and services, panels will hold that that activity gives rise to a right or legitimate interest in the domain name and hence a defence to the proceeding. The same result may occur if the site is a criticism site where the owner is exercising freedom of speech to be critical of persons or issues. There are many UDRP decisions to that effect. However, the decisions are equally clear that it is not sufficient simply to assert that the site is a fan, tribute, review or criticism site; it is necessary to prove it and the best way to do that is to look at the site. In the present case, the site, as matter of fact, is not in substance or in essence, a site devoted to any of the purposes just mentioned but is clearly a commercial site designed to sell goods and to sell them in a dishonest way by Respondent pretending that it is Complainant, by illegally using Complainant’s trademark and by falsely pretending that it is authorized to sell Complainant’s well known goods.
One only has to go to the home page of Respondent’s website to be confronted with a large and vivid advertisement announcing: ‘The Big amazon Sale -Save up to 60%.Shop now.’ Under that advertisement are references to men’s, women’s and boys and girls requisites and, to take one example, an array of watches for sale with allegedly the official price and the lower price offered by the website. The resulting page carries links allegedly to Amazon and all of its offerings, with the usual opportunity to order goods that are for sale. Returning to Respondent’s website, it makes a passing reference to reviews of Fossil products, although in the opinion of the Panel, they are not really reviews but promotions for why the viewer should buy the particular item. Moreover, the site then devotes itself to what is clearly the real and substantial content of the site which is expressed in the following words: ‘If you are looking for a men’s Fossil watch, you have come to the right place. Here at Fossil Outlet we find you have a great variety of men’s Fossil watches for sale as well as numerous elegant ladies fossil watches.’ The Respondent submits that it has a disclaimer on the home page of the website. That is not true, as the only relevant feature on the home page is a link to the ‘Disclaimer’ which is on the last page of the site. In any event, the so-called disclaimer carries the statement that ‘…some of the links on this blog/website, either through images, text, audio anywhere throughout this website, are in fact affiliate links, and if you purchase products through these links then we get paid a commission.’ Accordingly, it is clear from that statement alone that the site is not a review site but a commercial site where goods are for sale. There are also many uses of the word ‘Fossil’ on this essentially commercial website that are clearly designed to create the false illusion that it is in fact a Fossil enterprise conducted with the full authority of the company bearing that name and that the goods for sale are official and genuine Fossil goods. Finally, the Panel reads the alleged reviews of Fossil products on the websites as reviews only in so far as they advance reasons why the internet user should buy the goods in question and buy them through the website or through Amazon.
It would be difficult to imagine a website further removed from the notion of a genuine fan, tribute or review site than Respondent’s site.
Respondent also claims that its disclaimer exonerates it. The page of the website so described is buried at the end of the site and, at the very end of the page, seemingly as an afterthought, the following sentence appears: ‘We have no affiliation to the Fossil Company.’ The sentence is of no force or effect, as it has no prominence, it leaves intact the obvious implication that it is an affiliate of other companies that are authorized to sell Complainant’s products which it is not and it is confusing. The statement is confusing because it comes after statements that the site is paid commission from affiliates , that links to goods for sale ‘ re-direct through our affiliate links and we earn commission if you buy through these also’ and that it is recommending products ‘as an affiliate.’
Thus, even as the site is today, it is not in any sense a review or other legitimate site and it is deceptive so to argue.
Moreover, as Complainant submits and supports by unchallenged evidence, Respondent made some merely token changes to the website after it was served with the Complaint and before filing its Response, in particular by removing the FOSSIL logo, but retaining the FOSSIL mark on the site; before that, the website was an even more brazen commercial website attempting to mislead users into believing that it was a genuine Fossil site by using the well known FOSSIL logo. It is not necessary to go into the matter in more detail, other than to say that the Panel agrees with all of the submissions of Complainant set out in its Additional Submission.
Accordingly, Respondent has failed to rebut the prima facie case against it. The Panel therefore 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.
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 alleges that Respondent registered the <fossil-outlet.com> domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s FOSSIL mark as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant. Complainant alleges that Respondent deliberately created a domain name predominantly using Complainant’s FOSSIL mark in attempts to mislead or confuse consumers as to the source and affiliation of the website resolving from Respondent’s <fossil-outlet.com> domain name. Complainant further states that Respondent is using the FOSSIL mark and the logo that resembles Complainant’s in order to benefit commercially from Complainant’s well established goodwill and that the logo appeared on the website until Respondent was served with the Complaint. The Panel agrees with those submissions. Previous panels have found bad faith when a respondent knowingly takes advantage of a well-known mark to attract users to respondent’s own website. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)) ; see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). On that basis, the Panel finds that Respondent registered and is using the <fossil-outlet.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Complainant contends that in light of the fame and notoriety of Complainant's FOSSIL mark, it is inconceivable that Respondent could have registered the <fossil-outlet.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Arguments based on constructive notice are not generally successful, but the Panel finds that Respondent had actual knowledge of Complainant's rights in the FOSSIL mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thirdly, in addition and having regard to the totality of the evidence and the observations already made by the Panel on 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.
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-outlet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 18, 2012
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