national arbitration forum

 

DECISION

 

Fossil Group, Inc. v. wuruima wu

Claim Number: FA1402001544486

 

PARTIES

Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is wuruima wu (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2014; the National Arbitration Forum received payment on February 19, 2014.

 

On February 20, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <fossiljapansalestore.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 February 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 12, 2014 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@fossiljapansalestore.com.  Also on February 20, 2014, 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 March 19, 2014, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant has rights in the FOSSIL mark under Policy ¶ 4(a)(i).

 

Complainant uses its FOSSIL mark in connection with its products including watches, jewelry, fashion accessories, handbags, leather goods and clothing as well as in its relations with retail stores. Complainant first used the FOSSIL mark in commerce at least as early as 1985.

 

Complainant owns registrations throughout the world including registrations with the United States Patent and Trademark Office (“USPTO”) as well as with the State Administration for Industry and Commerce of the People’s Republic of China (“SAIC”) and the Japan Copyright Office (“JCO”); USPTO (e.g., Reg. No. 1,467,255 registered December 1, 1987); SAICO (e.g., Reg. No. 633,589 registered March 10, 1993);JCO (e.g., Reg. No.2,325,665 registered July 31, 1991).

 

Respondent’s <fossiljapansalestore.com> domain name is confusingly similar to Complainant’s FOSSIL mark. Respondent’s <fossiljapansalestore.com> domain name contains Complainant’s famous FOSSIL mark combined with the generic terms “japan,” “sale,” and “store.” Respondent also adds the generic top-level domain (“gTLD”) “.com.”

 

Respondent has no rights or legitimate interests in the <fossiljapansalestore.com> domain name. Respondent is not commonly known by the disputed domain name. WHOIS information for Respondent’s disputed domain name lists “wuruima wu” as registrant. Further, Complainant has not licensed or authorized Respondent to use the FOSSIL mark. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent’s disputed domain name resolves to a website that displays Complainant’s logo and is attempting to appear as an official site of Complainant’s. Respondent uses images that belong to Complainant, including images of their products. Respondent is selling products and commercially profiting from the use of Complainant’s FOSSIL mark.

 

Respondent registered and is using the <fossiljapansalestore.com> domain name in bad faith. 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. Respondent’s use of the disputed domain name gives a false impression of an affiliation with Complainant and its mark. Complainant claims it is clear that Respondent has sought to benefit commercially from the goodwill affiliated with Complainant and its FOSSIL mark. Respondent had knowledge of Complainant and Complainant’s FOSSIL mark when it registered the disputed domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns a USPTO registered trademark for FOSSIL as well as other registrations worldwide including but not limited to SAICO Registration Nos. 633,589 and 723,888 each for the mark FOSSIL.

 

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 <fossiljapansalestore.com> domain name is used by Respondent to host a website which displays Complainant’s trademark and logos and uses images owned by Complainant apparently to market FOSSIL look-alike products.

 

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’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, 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 . . .”).

 

Respondent’s at-issue domain name contains Complainant’s entire FOSSIL mark, adds the terms “japan,” “sale,” and “store,” and appends the top level domain name “.com” thereto. The addition of the terms “sale” and “store” only serves to further confuse Respondent’s domain name with Complainant’s trademark as their suggests Complainant’s connection with retail markets. Likewise, adding the term “japan” suggests Complainant may have operations specific to Japan. The Panel also notes that the top-level domain name, here “.com,” is irrelevant for the purpose of Policy ¶4(a)(i) analysis. Therefore, Respondent’s <fossiljapansalestore.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).

 

Rights or Legitimate Interests

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 “wuruima wu” 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’s disputed domain name resolves to a website that displays Complainant’s logo and feigns being an official website of Complainant. On that website Respondent uses images that belong to Complainant, including images of Complainant’s products, an oval logo with Complainant’s mark that is similar to Complainant’s official logo, and images of products that resemble Complainant’s products including wallets, watches, and purses. Additionally, Respondent falsely marks the sham website with a copyright notice: “©2013 Fossil.” Using the at-issue domain name to pass oneself off as another, as Respondent does here, 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 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)). Likewise, Respondent has no rights or legitimate interests in a domain name used to compete with Complainant by selling a complainant’s products when, as here, Respondent is not authorized to do so. 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.”)

 

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).

 

Registration and Use in Bad Faith

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 non-Policy ¶ 4(b) 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, through its <fossiljapansalestore.com> website, markets products that appear to be Complainant’s. Respondent’s offerings including wallets, purses, and watches. Using the confusingly similar domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy 4(b)(iii).  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”).

 

Furthermore and as also mentioned above Respondent’s use of the confusingly similar <fossiljapansalestore.com> domain name intentionally gives the false impression that there is some relationship between the website and Complainant’s FOSSIL mark. Although not authorized to use the FOSSIL trademark, Respondent nevertheless seeks to benefit from the goodwill associated with the FOSSIL mark through increased traffic to its website and through the false association of Complainant with the products sold on the website. In using the at-issue domain name as it does, Respondent intentionally attempts to attract Internet users to the <fossiljapansalestore.com> website for commercial gain by creating a likelihood of confusion between the website and Complaint as being its source, sponsor, affiliate or endorser. Such use demonstrates that Respondent registered and is using the <fossiljapansalestore.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).

 

Finally, Respondent had actual knowledge of Complainant’s rights in the FOSSIL trademark before it registered the <fossiljapansalestore.com> domain name. Respondent’s prior knowledge is evident from, among other things, the notoriety of Complainant’s FOSSIL mark, the use of Complainant’s mark and logo on the at-issue website, and the marketing of FOSSIL look-alike products thereon. Registering and using a confusingly similar domain with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use of the domain name 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).

 

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

 

 

Paul M. DeCicco, Panelist

Dated:  March 21, 2014

 

 

 

 

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