Fossil Group, Inc. v. Daniil Lukianov / Skagen Watch
Claim Number: FA1902001830312
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Daniil Lukianov / Skagen Watch (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skagenwatchstore.com>, registered with Tucows Domains 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2019; the Forum received payment on February 19, 2019.
On February 19, 2019, Tucows Domains Inc. confirmed by e-mail to the Forum that the <skagenwatchstore.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 February 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 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@skagenwatchstore.com. Also on February 19, 2019, 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 March 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 is the owner of numerous proprietary marks used in connection with watches, jewelry, fashion accessories, and related items as well as retail stores featuring watches, jewelry, fashion accessories, and other related goods and services. Complainant has rights in the SKAGEN mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g.¸ Reg. No. 3,323,115, registered Oct. 30, 2007). Respondent’s <skagenwatchstore.com> domain name is confusingly similar to Complainant’s famous SKAGEN mark adding only the generic or descriptive terms “watch store” and the “.com” generic top-level domain (“gTLD) to the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s SKAGEN mark, and Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Further, Respondent does not use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Rather, Respondent previously used the domain name to pass off as Complainant and offer competing watches, either real or counterfeit. Additionally, Respondent currently uses the domain name to offer unrelated t-shirts and other goods using the SKAGEN mark.
Respondent registered and uses the disputed domain name <skagenwatchstore.com> in bad faith. Respondent disrupts Complainant’s business and has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s SKAGEN mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Further, Respondent had actual knowledge of Complainant’s rights in the SKAGEN mark given the fact that the mark is famous, along with Respondent’s use of the mark to sell Complainant’s products.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of numerous proprietary marks used in connection with watches, jewelry, fashion accessories, and related items as well as retail stores featuring watches, jewelry, fashion accessories, and other related goods and services. Complainant has rights in the SKAGEN mark through its trademark registration with the USPTO (e.g.¸ Reg. No. 3,323,115, registered Oct. 30, 2007). Respondent’s <skagenwatchstore.com> domain name is confusingly similar to Complainant’s SKAGEN mark.
Respondent registered the <skagenwatchstore.com> domain name on February 11, 2019.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent previously used the domain name to pass off as Complainant and offer competing watches, either real or counterfeit. Additionally, Respondent currently uses the domain name to offer unrelated t-shirts and other goods using the SKAGEN mark.
Respondent registered and uses the disputed domain name <skagenwatchstore.com> 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 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(f), 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 (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 has rights in the SKAGEN mark under Policy ¶ 4(a)(i) through registrations with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s domain name <skagenwatchstore.com> is confusingly similar to Complainant’s SKAGEN mark, adding only the generic or descriptive terms “watch store” and the “.com” gTLD to the mark.
Respondent has no rights or legitimate interests in the <skagenwatchstore.com> domain name. Complainant has not authorized Respondent to use Complainant’s SKAGEN mark. The WHOIS information identifies the Registrant as “Daniil Lukianov / Skagen Watch.” Therefore, Respondent is not commonly known by the <skagenwatchstore.com> domain name per Policy ¶ (c)(ii).
Respondent does not use the <skagenwatchstore.com> domain name to make a bona fide offering of goods or services.
First, Respondent is trying to confuse and mislead the public as to the source of Respondent’s domain by passing off as Complainant to offer competing goods. Mimicking and attempting to pass off as a complainant to sell competing goods or services is not a bona fide offering of goods or services or legitimate noncommercial or fair use per policy ¶¶ 4(c)(i) and (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)).
Moreover, Respondent currently uses the domain name to offer unrelated t-shirts and other goods using the SKAGEN mark. Using a confusingly similar domain to promote services unrelated to a complainant can show a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii). See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (finding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Complainant provides a screenshot of the current webpage associated with the domain name, which appears to solicit the sale of various t-shirts.
Respondent registered and used the confusingly similar <skagenwatchstore.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv) by attempting to attract users seeking Complainant’s SKAGEN mark thru passing off as Complainant. Passing off or impersonating a complainant at a disputed domain name shows bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv). See Fossil, Inc. v. NAS, FA 92525 (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 Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Respondent also registered the <skagenwatchstore.com> domain name in bad faith per Policy ¶ 4(a)(iii)). Respondent had actual knowledge of Complainant’s rights in the SKAGEN trademark prior to registration. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (Respondent’s appropriation of Complainant’s trademark to trade upon Complainant’s reputation and goodwill shows Respondent’s actual knowledge of Complainant’s mark prior to registration, thereby constituting bad faith per Policy ¶ 4(a)(iii)).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skagenwatchstore.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 27, 2019
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