Fossil Group, Inc. v. adisorn jiwdee
Claim Number: FA1310001524131
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is adisorn jiwdee (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilwomenswatches.info>, registered with Wild West Domains, LLC.
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 October 11, 2013; the National Arbitration Forum received payment on October 11, 2013.
On October 14, 2013, Wild West Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <fossilwomenswatches.info> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 October 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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@fossilwomenswatches.info. Also on October 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 November 8, 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 sells watches, jewelry, fashion accessories, handbags, and clothing as well as operating retail stores. In addition to its retail stores, Complainant generates significant revenue from its official website, <fossil.com>, which was established in November of 1996.
Complainant has rights in the FOSSIL mark, used in connection with the sale of watches, jewelry, fashion accessories, handbags, and clothing. Complainant owns registrations for the FOSSIL mark with the Department of Intellectual Property in Thailand (“DIP”) (See, e.g., Reg. No. KOR26082 registered Feb. 28, 1995). Complainant also owns registrations for the FOSSIL mark with the United States Patent and Trademark Office (“USPTO”) (See, e.g., Reg. No. 1,467,255 registered Dec. 1, 1987).
Respondent’s <fossilwomenswatches.info> domain name is confusingly similar to Complainant’s FOSSIL mark. The disputed domain name incorporates Complainant’s mark in its entirety while also adding the generic terms “womens” and “watches” and the generic top-level domain (“gTLD”) “.info.”
Respondent does not have any rights or legitimate interests in the <fossilwomenswatches.info> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its FOSSIL mark in any way. The WHOIS record identifies the domain name registrant as “adisorn jiwdee.” Respondent is using the <fossilwomenswatches.info> domain name to display links to competing third-party sites for which Respondent presumably receives click-through revenue.
Respondent registered and is using the <fossilwomenswatches.info> domain name in bad faith. Respondent is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s FOSSIL mark. The disputed domain name resolves to a website featuring competing third-party links for which Respondent presumably receives click-through revenue. Respondent had knowledge of Complainant’s FOSSIL mark prior to registering the <fossilwomenswatches.info> domain name because Complainant’s mark is famous and familiar to Internet users.
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 including a registration with the DIP in Thailand.
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 <fossilwomenswatches.info> domain name is used by Respondent to host a website featuring competing third-party links from which Respondent presumably receives click-through revenue..
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.”).
Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and DIP, 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 . . .”).
The at-issue domain name contains Complainant’s entire FOSSIL mark, adds the terms “women” and “watches,” and appends the top level domain name “.info” thereto. The addition of the terms “woman” and “watches” only serves to further confuse the domain name with Complainant’s trademark as the addition suggests Complainant’s products. The necessary top level domain name, here “.info,” is irrelevant for the purpose of Policy ¶4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <fossilwomenswatches.info> 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 “adisorn jiwdee” as the at-issue domain name’s registrant and 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 is using the <fossilwomenswatches.info> domain name to display links to competing third-party sites for which Respondent presumably receives click-through revenue. Such links including: “Lowest Price Fossil Wallace Rose Gold-Tone Ladies Watch ES3175 Shor For,” “Discount Fossil Expansion with Glitz Women’s watch #ES2908 Limited Supply,” and “Superior Fossil Georgia Grey Dial Leather Strap Ladies Watch ES3077 Information.” Using the at-issue domain name to promote competing third-party websites 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). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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)).
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 <fossilwomenswatches.info> website to promote links to third parties promoting competing goods. It is apparent that Respondent receives click-through fees when such links are clicked. 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 is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s FOSSIL mark. Again as mentioned above, the at-issue domain name creates a likelihood of confusion with Complainant’s FOSSIL mark by incorporating Complainant’s FOSSIL mark. The <fossilwomenswatches.info> website displays links to third parties not affiliated with Complainant via links from which Respondent presumably receives click-through revenue. Using a confusingly similar domain name to attract Internet users to a website featuring competing pay-per-click links constitutes bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent'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 FOSSIL trademark before it registered the <fossilwomenswatches.info> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s FOSSIL mark and the juxtaposition in the domain name of Complainant’s mark with the suggestive descriptor “womenswatches.” 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 <fossilwomenswatches.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 11, 2013
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