national arbitration forum

 

DECISION

 

Fossil, Inc. v. Uniwebhosting.com

Claim Number: FA1305001499615

 

PARTIES

Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Uniwebhosting.com (“Respondent”), Serbia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <relicwatchess.com>, registered with GODADDY.COM, LLC.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2013; the National Arbitration Forum received payment on May 14, 2013.

 

On May 14, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <relicwatchess.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 May 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2013 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@relicwatchess.com.  Also on May 15, 2013, 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.

 

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

 

On June 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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

a)    Complainant contends that it has rights in the RELIC mark, used in connection with watches, jewelry, handbags, other leather goods, sunglasses, fashion accessories and gift items. Complainant is the owner of registrations for the RELIC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,698,363 registered June 30, 1992). See Complainant’s Exhibit B.

b)    The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <relicwatchess.com> domain name uses Complainant’s mark in its entirety along with the generic term “watches” with an additional “s.” The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”

c)    Respondent does not own any rights or have any legitimate interest in the <relicwatchess.com> domain name.

a.    Respondent is not commonly known by Complainant’s RELIC mark. The WHOIS information identifies the disputed domain name registrant as “Uniwebhosting.com.” See Complainant’s Exhibit A. Respondent is not licensed by Complainant to use Complainant’s mark, nor is Respondent otherwise affiliated with Complainant.

b.    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <relicwatchess.com> domain name. The disputed domain name resolves to a website that includes links to Complainant’s competitors. See Complainant’s Exhibit E. Complainant believes Respondent is receiving click-through revenue.

d)    Respondent registered and is using the <relicwatchess.com> domain name in bad faith.

a.    Respondent is disrupting Complainant’s business by providing links to Complainant’s competitors.

b.    Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s RELIC mark and receiving click-through revenue.

c.    The disclaimer Respondent has included on the bottom of the resolving website does not negate a finding of bad faith registration and use.

d.    Respondent had knowledge of Complainant’s famous mark prior to registering the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.     Complainant has rights in its RELIC mark.

2.    Respondent’s <relicwatchess.com> domain name is confusingly similar to Complainant’s mark.

3.    Respondent has no rights to or legitimate interests in the domain name.

4.    Respondent registered and used the domain name in bad faith.

 

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

 

Complainant contends that it has rights in the RELIC mark, used in connection with watches, jewelry, handbags, other leather goods, sunglasses, fashion accessories and gift items. Complainant asserts that it is the owner of registrations for the RELIC mark with the USPTO (e.g., Reg. No. 1,698,363 registered June 30, 1992). See Complainant’s Exhibit B. Therefore, the Panel  finds that Complainant has rights in the RELIC mark under Policy ¶ 4(a)(i), despite the fact that Respondent operates in Serbia. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <relicwatchess.com> domain name uses Complainant’s mark in its entirety along with the generic term “watches” with an additional “s.” Complainant notes that the disputed domain name also adds the gTLD “.com.” The Panel finds that the addition of the generic term “watches” and the additional “s” do not distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the Panel finds that the addition of the gTLD “.com” is irrelevant to confusing similarity analysis. 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). Therefore, the Panel finds that Respondent’s <relicwatchess.com> domain name is confusingly similar to Complainant’s RELIC mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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.”).

 

Complainant alleges that Respondent does not own any rights or have any legitimate interest in the <relicwatchess.com> domain name. Complainant asserts that Respondent is not commonly known by Complainant’s RELIC mark. The WHOIS information identifies the disputed domain name registrant as “Uniwebhosting.com.” See Complainant’s Exhibit A. The Panel uses the WHOIS information as one factor in determining whether Respondent is commonly known by Complainant’s mark. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Further, Complainant states that Respondent is not licensed by Complainant to use Complainant’s mark, nor is Respondent otherwise affiliated with Complainant. Therefore, the Panel finds that Respondent is not commonly known by the <relicwatchess.com> domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <relicwatchess.com> domain name. Complainant alleges that the disputed domain name resolves to a website that purports to provide information about Complainant’s products, but includes links to Complainant’s competitors. See Complainant’s Exhibit E. Complainant believes Respondent is receiving click-through revenue. Panels have found that such conduct does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute 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).”). Therefore, the Panel finds that Respondent’s use of the <relicwatchess.com> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <relicwatchess.com> domain name in bad faith. Complainant alleges that Respondent is disrupting Complainant’s business by providing links to Complainant’s competitors. See Complainant’s Exhibit E. Panels have found that providing links to a complainant’s competitor violates Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent’s use of the disputed domain name to advertise watches sold by Complainant’s competitors disrupts Complainant’s business in bad faith under Policy ¶4(b)(iii).  

 

Complainant asserts that Respondent intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s RELIC mark and receiving click-through revenue. Panels have found this type of conduct to be in violation of Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent purposefully choose a confusingly similar domain name in order to divert consumers searching for Complainant and the watches it sells under its mark. The Panel further finds that Respondent’s intentional diversion was motivated by the prospect of commercial gain, as Respondent stands to collect click-through revenues from the competing links featured on its site. Therefore, the Panel finds Respondent’s use and registration of the <relicwatchess.com> domain name to illustrate bad faith under Policy ¶ 4(b)(iv).

 

Complainant contends that the disclaimer Respondent has included on the bottom of the resolving website does not negate a finding of bad faith registration and use. Panels have found that disclaimers do not mitigate a find of bad faith registration and use, as initial interest confusion has already occurred by the time an Internet user arrives at the respondent’s site. 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)”). Therefore, the Panel finds that Respondent’s disclaimer on the resolving website connected to the <relicwatchess.com> domain name does not mitigate a finding of bad faith registration and use under Policy ¶4(a)(iii).

 

Lastly, Complainant alleges that Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name, as “Complainant’s RELIC mark was unquestionably famous and familiar to Internet users.” The Panel notes that Respondent’s inclusion of a disclaimer also suggests knowledge of Complainant and its rights in the mark. The Panel here concludes that Respondent had actual notice of Complainant's mark at the time the disputed domain name was registered. The Panel holds that Respondent registered the disputed domain name in 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”).

 

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 <relicwatchess.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 25, 2013

 

 

 

 

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