Fossil Group, Inc. v. Xiao Han / Nerf Druids
Claim Number: FA1308001515011
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Xiao Han / Nerf Druids (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilstella.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2013; the National Arbitration Forum received payment on August 15, 2013.
On August 16, 2013, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fossilstella.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 August 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 9, 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@fossilstella.com. Also on August 19, 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 September 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant owns the FOSSIL mark through trademark registrations with numerous trademark agencies including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,467,255, registered Dec. 1, 1987) and others agencies including China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 713,341, registered October 28, 1994), and the Mexican Institute of Industrial Property (“MIIP”) (e.g., Reg. No. 610,594, registered August 27, 1990).
Complainant uses the FOSSIL mark in connection with watches, jewelry, fashion accessories, handbags, leather goods, and clothing. Complainant operates in retail stores (with stores in more than 90 countries) and online at <fossil.com>.
Complainant has invested substantial effort and expense to develop goodwill in the FOSSIL mark for more than 25 years, and the mark has become famous and distinctive.
The <fossilstella.com> domain name is confusingly similar to the FOSSIL mark as the domain fully incorporates the mark and merely adds the generic top-level domain (“gTLD”) “.com,” and the term “stella,” which is a specific name of one of Complainant’s popular watch styles.
Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the FOSSIL mark, nor is Respondent affiliated with Complainant in any way. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. The domain name resolves to a site that purports to have general information about FOSSIL watches, but also contains images of watches belonging to Complainant’s competitors. Respondent presumably receives click-through revenues in connection with the advertisements and links presented on the resolving webpage.
Respondent’s bad faith is evidenced by Respondent’s use of the website to promote links to third parties not affiliated with Complainant, including third parties promoting competing goods. Respondent presumably receives click-through fees from the scheme.
Respondent has intentionally tried to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s FOSSIL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for FOSSIL as well as other registrations worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the FOSSIL mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in FOSSIL.
The <fossilstella.com> domain name is used by Respondent to host a website that purports to have general information about FOSSIL watches, but also contains images of watches belonging to Complainant’s competitors. Respondent intends to receive click-through revenues in connection with the advertisements and links presented on <fossilstella.com> addressed webpages.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registrations for its FOSSIL mark with numerous trademark agencies worldwide, including the USPTO, SAIC, and MIIP, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
The at-issue domain name contains Complainant’s entire FOSSIL mark, adds the term “stella,” which is one of Complainant’s watch styles, and appends the top level domain name “.com” thereto. The addition of the term “stella” only serves to further confuse the domain name with Complainant’s trademark as it suggests one of Complainant’s products; the necessary top level domain name is irrelevant for the purpose of Policy ¶4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <fossilstella.com> domain name is confusingly similar to Complainant’s FOSSIL mark under the Policy. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Xiao Han / Nerf Druids” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was 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).
Respondent’s domain name addresses a website that purports to have general information about FOSSIL watches, but also contains images of watches belonging to Complainant’s competitors, including Seiko and Citizen. Moreover, the website displays the FOSSIL trademark. Respondent’s use of the confusingly similar domain name in such a manner 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 of the at-issue domain name. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (finding that “[t]he disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors [which is] neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent uses its <fossilstella.com> website to promote links to third parties not affiliated with Complainant, including third parties promoting competing goods. It is apparent that Respondent receives click-through fees when such links are clicked on. This use of the domain name is disruptive to Complainant’s business and thereby demonstrates bad faith pursuant to Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Furthermore, Respondent has intentionally tried to attract Internet users for commercial gain by creating confusion between Complainant’s FOSSIL mark and the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent intends to benefit from such confusion via click-through fees. Therefore the Panel finds that the Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (finding “[r]espondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”)
Finally, Respondent had actual knowledge of Complainant’s rights in the ENTERPRISE trademark before registering the <fossilstella.com> domain name. Respondent’s prior knowledge is evident from: 1) the notoriety of Complainant’s FOSSIL mark; 2) the juxtaposition in the domain name of the mark and “stella,” one of Complainant’s watch styles; 3) the fact that the <fossilstella.com> website displays Complainant’s FOSSIL trademark; and from 4) the fact that Respondent’s website contains links to Complainant’s competitors. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the at-issue domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fossilstella.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 16, 2013
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