Fossil Group, Inc. v. fanglijiang / fang lijiang
Claim Number: FA1701001712542
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is fanglijiang / fang lijiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossiljpstore.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 16, 2017; the Forum received payment January 16, 2017.
On January 17, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <fossiljpstore.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2017, 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@fossiljpstore.com. Also on January 17, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 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’s Allegations in this Proceeding:
Complainant registered the FOSSIL mark in various countries, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,467,255, registered Dec. 1, 1987) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 633,589, registered Mar. 10, 1993), among several other governmental authorities. See Compl., at Attached Annex B. Respondent’s <fossiljpstore.com> is confusingly similar to Complainant’s mark because it incorporates the FOSSIL mark entirely while adding the generic terms “jp” and “store” and adding the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights to or legitimate interests in <fossiljpstore.com>. The WHOIS identifies “fanglijiang / fang lijiang” as registrant. Respondent is not commonly known by Complainant’s FOSSIL mark and Respondent has not used the disputed domain name in connection with any bona fide offering of goods or services or any legitimate noncommercial or fair use. Additionally, Respondent is not an authorized vendor, supplier, or distributor of Complainant’s FOSSIL mark. The disputed domain name goes to a site that prominently displays the FOSSIL trademark and appears in all respects to be an official Fossil site with images that belong to Fossil, as well as products for sale that resemble genuine Fossil products. See Compl., at Attached Annex G. It is unclear whether the products on the site are genuine or counterfeit.
Respondent registered and used <fossiljpstore.com> in bad faith. The FOSSIL mark was unquestionably famous and familiar to Internet users at the time Respondent registered the disputed domain name. Respondent intentionally attempted to attract Internet users for commercial gain, creating a likelihood of confusion with the Complainant’s FOSSIL marks as to the source, sponsorship, affiliation, or endorsement of Respondent from or by Complainant. It is clear that Respondent attempted to commercially benefit from Complainant’s well-established goodwill by using the FOSSIL mark and images of what look like Fossil products. This evidence demonstrates actual knowledge of Complainant and its rights in the mark and supports findings of Respondent’s bad faith under Policy ¶ 4(b)(iv) and Policy ¶ 4(a)(iii).
B. Respondent’s Allegation in this Proceeding:
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent registered <fossiljpstore.com> around December 30, 2016. See Compl., at Attached Annex A.
Complainant established rights to and legitimate interests in the protected mark contained within the disputed domain name.
Respondent has no such rights to or legitimate interests in the disputed domain name or the protected mark contained within it.
Respondent registered a disputed domain name containing in its entirety Complainant’s protected mark and the domain name is confusingly similar to that mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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 or Confusingly Similar:
Complainant established rights and legitimate interests under the Policy by showing registration of the FOSSIL mark in various countries, including with the USPTO (e.g., Reg. No. 1,467,255, registered Dec. 1, 1987), and the SAIC (e.g., Reg. No. 633,589, registered Mar. 10, 1993). See Compl., at Attached Annex B. Registration with trademark authorities in multiple countries, specifically with the SAIC and USPTO, evidences rights under Policy ¶ 4(a)(i). See Guess? IP Holder L.P. and Guess?, Inc. v. zhou hong hai, FA 1610066 (Forum May 1, 2015) (determining that “Complainant’s USPTO and SAIC registrations are sufficient to establish Complainant’s rights in the GUESS mark under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant established rights in the FOSSIL mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <fossiljpstore.com> is confusingly similar as it incorporates the FOSSIL mark in its entirety, only adding the generic terms “jp,” a common abbreviation for “Japan,” and “store,” as well as the gTLD “.com.” These generic changes do not to distinguish a disputed domain name from the protected mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). Therefore, the Panel finds that Respondent registered a domain name containing Complainant’s protected mark in its entirety and the domain name is confusingly similar to that mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN 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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 contends that Respondent has no rights or legitimate interests in <fossiljpstore.com>. Where Respondent files no response, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies Respondent as “fanglijiang / fang lijiang.” Complainant alleges that Respondent is not commonly known by the FOSSIL mark, licensed by Complainant to use Complainant’s mark, and is not an authorized vender, supplier, or distributor of Complainant’s FOSSIL mark. Accordingly, the Panel finds that Respondent is not commonly known by <fossiljpstore.com> under Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that the <fossiljpstore.com> domain name goes to a site that prominently displays the Fossil trademark and appears in all respects to be an official Fossil site with images that belong to Fossil, as well as having products for sale that resemble genuine Fossil products. See Compl. Attached Annex G. Conduct of this nature may not be a bona fide offering of good or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (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)). Complainant is unsure as to whether the products that Respondent sells on the disputed domain name are real Fossil products or counterfeit replications. Unauthorized sale of Complainant’s goods, or similar counterfeit goods, is not a bona fide offering of goods or services and is not a legitimate noncommercial use. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). The Panel finds that Respondent’s unauthorized use of Fossil marks to sell Complainant’s products or counterfeit versions of such products is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent intentionally attempted to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s FOSSIL marks as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant. Unauthorized use of complainant’s trademark for commercial gain supports findings of bad faith registration and use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Complainant asserts that by using the FOSSIL mark and images of what look like Fossil products, Respondent’s web site gives the false impression of an affiliation with Complainant and its mark. Accordingly, the Panel finds that Respondent’s unauthorized use of Complainant’s FOSSIL mark and listing of products similar to Complainant’s goods constitutes bad faith registration under Policy ¶4(b)(iv).
Complainant also contends that Respondent actually or constructively knew of Complainant’s FOSSIL mark in light of its famous trademark, and that Respondent intentionally adopted a name and products identical to the Complainant’s. However, constructive knowledge alone will not support findings of bad faith under the Policy. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Alternatively, the Panel finds that given Complainant’s international presence and Respondent’s direct opportunistic use of Complainant’s goodwill and products, or counterfeit products, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge, which Respondent had, supports findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fossiljpstore.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Carolyn Marks Johnson, Panelist
Dated: February 27, 2017
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