Timex Group USA, Inc. v. Private person 11718 et al.
Claim Number: FA1505001619668




   Complainant: Timex Group USA, Inc. of Middlebury, CT, United States of America
Complainant Representative: Fross Zelnick Lehrman & Zissu, P.C. Todd Martin of New York, NY, United States of America

   Respondent: Private person 11718 Jurij Marchenko of Kiev, II, UA


   Registries: Over Galley, LLC,Tin Mill, LLC,Silver Avenue, LLC,Sugar House, LLC,Wild Way, LLC
   Registrars: PDR Ltd. d/b/a PublicDomainRegistry.com


   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 Examiner in this proceeding.
   David L. Kreider Esq,, as Examiner


   Complainant Submitted: May 15, 2015
   Commencement: May 22, 2015
   Default Date: June 8, 2015
   Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").


   Complainant requests that the domain name be suspended for the life of the registration.


   Clear and convincing evidence.


   Findings of Fact: [OptionalComment]


Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.

[URS] The registered domain name(s) is/are identical or confusingly similar to a word mark:
  (i) for which the Complainant holds a valid national or regional registration and that is in current use; or
  (ii) that has been validated through court proceedings; or
  (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.

Determined: Finding for Complainant 

Respondent registered five domain names, each of which is identical to Complainant’s registered TIMEX trademark, after receiving notice of Complainant’s rights in the mark, and despite having no legitimate interest in the Domain Names. Respondent has not used the domain names in connection with active websites. Such passive holding is a bad faith use of the Domain Names.

[URS] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 

Complainant has never granted any license or other permission to Respondent to use the TIMEX mark nor has Respondent been authorized by the Complainant to register or use any domain name incorporating the TIMEX mark. Respondent is not named or commonly known as “Timex” nor is there any evidence to show that Respondent sells TIMEX watches or other merchandise.

[URS] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 

As is noted above, because the TIMEX trademark is registered with the TMCH, when Respondent attempted to register the five domain names that are at issue in this dispute: Timex.gallery, timex.international, timex.company, timex.center and timex.boutique (the “Domain Names”) he would have received “a warning notice” from the TMCH with each one, as part of its Trademark Claims service. Despite having received this notice, Respondent proceeded with his registration of each of the Domain Names, fully aware that his registrations conflicted with Complainant’s TIMEX trademark registration.Moreover, the Respondent is not using the Domain Names in connection with active websites. Passive inactivity with respect to a domain name is considered to be in bad faith. Passive holding of a domain is even more likely to be considered in bad faith when Respondent’s registration of the domain also prevents the mark owner from reflecting its mark in a corresponding domain name, as is the case here.


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

The Examiner finds as follows:

  1. The Complaint was neither abusive nor contained material falsehoods. 


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. timex.boutique
  2. timex.center
  3. timex.company
  4. timex.gallery
  5. timex.international


David L. Kreider Esq,
Dated: June 8, 2015



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