Fossil, Inc. v. www.fossil-watch.org c/o
Host Master
Claim
Number: FA0409000335513
Complainant is Fossil, Inc. (“Complainant”), represented
by Deborah L. Lively of Thompson & Knight, LLP, 1700 Pacific Ave., Suite 3300, Dallas,
TX 75201. Respondent is www.fossil-watch.org c/o Host Master (“Respondent”), 7934 Franklin Ave. 23, Ashland, OH
44805.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fossil-watch.org>, registered with Tucows.
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
Panelist in this proceeding.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 28, 2004; the Forum received a hard copy of the
Complaint on September 29, 2004.
On
September 28, 2004, Tucows confirmed by e-mail to the Forum that the domain
name <fossil-watch.org> is registered with Tucows and that
Respondent is the current registrant of the name. Tucows has verified that
Respondent is bound by the Tucows registration agreement and has thereby agreed
to resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
September 30, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 20, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@fossil-watch.org by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 28, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (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."
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 makes the following assertions:
1. Respondent’s <fossil-watch.org>
domain name is confusingly similar to Complainant’s FOSSIL mark.
2. Respondent does not have any rights or
legitimate interests in the <fossil-watch.org> domain name.
3. Respondent registered and used the <fossil-watch.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Fossil, Inc., is in the watch, jewelry,
fashion accessory and clothing business.
Complainant holds numerous trademark registrations with the United States
Patent and Trademark Office for the FOSSIL mark (including Reg. No. 1,559,950
issued October 10, 1989; Reg. No. 1,467,255 issued December 1, 1987; and Reg.
No. 2,128,773 issued January 13, 1998).
Complainant has used its FOSSIL mark continuously and exensively in
commerce since at least as early as 1985 in the United States. Complainant now offers its FOSSIL products
in departement stores and specialty retail stores in over 90 countries and
through its website at the <fossil.com> domain name. Furthermore, Complainant has spent considerable
effort and money to promote its FOSSIL mark and the products associated
therewith.
Respondent registered the <fossil-watch.org> domain name on December 10, 2003 and is
using the domain name to redirect Internet users to Respondent’s website that
offers Complainant’s FOSSIL products.
The website’s homepage displays Complainant’s FOSSIL logo and contains
information regarding Complainant’s business that has been copied directly from
Complainant’s website, which gives the impression that Respondent’s website is
affiliated with or sponsored by Complainant.
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."
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.
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.
Complainant has
established in this proceeding that it has rights in the FOSSIL mark through
registration with the United States Patent and Trademark Office and by
continuous use of its mark in commerce for the last nineteen years. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
The <fossil-watch.org>
domain name registered by Respondent is confusingly similar to Complainant’s
FOSSIL mark because the domain name incorporates Complainant’s mark in its
entirety, adding a hyphen and the generic or descriptive term “watch,” which is
related to Complainant’s business.
Respondent’s addition of a hyphen and a generic or descriptive word to
Complainant’s registered FOSSIL mark is insufficient to distinguish the domain
name pursuant to Policy ¶ 4(a)(i). See
Chernow Communications, Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation
marks, such as hyphens, does not alter the fact that a name is identical to a
mark"); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or
term); see also Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
Furthermore,
the addition of the generic top-level domain (gTLD) “.org” to Complainant’s
FOSSIL mark is irrelevant to determining confusing similarity pursuant to
Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants").
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges in the Complaint that Respondent has no rights or legitimate interests
in the <fossil-watch.org> domain name, which contains
Complainant’s FOSSIL mark in its entirety.
Since Respondent failed to respond to the Complaint, the Panel assumes
that Respondent lacks rights and legitimate interests in the <fossil-watch.org>
domain name. Furthermore, once
Complainant makes a prima facie case in support of its allegations, the
burden shifts to Respondent to show that it does have rights to or legitimate
interests in the domain name pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has
asserted that Respondent has no rights or legitimate interests with respect to
the domain name it is incumbent on Respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the
mere assertion by Complainant that Respondent has no right or legitimate
interest is sufficient to shift the burden of proof to Respondent to
demonstrate that such a right or legitimate interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true); see also Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a
Response the Panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do).
Respondent is
using the <fossil-watch.org> domain name to redirect Internet
users to a website that sells Complainants products and that includes
information about Complainant and Complainant’s business. Respondent’s use of a domain name that is
confusingly similar to Complainant’s FOSSIL mark to redirect Internet users
interested in Complainant’s products to Respondent’s commercial website is not
a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Nat’l Collegiate
Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that
domain names used to sell Complainant’s goods without Complainant’s authority,
as well as others’ goods, is not bona fide use); see also Nike, Inc.
v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide”
offering of goods or services where Respondent used Complainant’s mark without
authorization to attract Internet users to its website, which offered both
Complainant’s products and those of Complainant’s competitors); see also
G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12,
2002) (finding Respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from Complainant does
not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i)).
Additionally, no
evidence has been presented that would suggest that Respondent is commonly
known by the <fossil-watch.org> domain name, and Complainant did
not license or authorize Respondent to use its FOSSIL mark. Therefore, Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
The <fossil-watch.org>
domain name contains Complainant’s well-known FOSSIL mark in its entirety and
diverts Internet users interested in Complainant’s products and services to
Respondent’s commercial website, which displays Complainant’s FOSSIL logo and
provides information about Complainant’s business that has been copied directly
from Complainant’s website.
Furthermore, since nothing on the website negates an association between
Complainant and Respondent, it is clear that Respondent is using a confusingly
similar domain name to attract Internet users to its website for commercial
gain. Such a practice of diversion for
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO
Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the
recognition that eBay has created for its mark and therefore profiting by
diverting users seeking the eBay website to Respondent’s site); see also
America Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally
attempted to attract Internet users to his website for commercial gain by
creating a likelihood of confusion with Complainant’s mark and offering the
same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or is sponsoring the services offered at the
site).
Furthermore,
although evidence of bad faith use and registration can be shown by proving one
of the four circumstances listed under Policy ¶ 4(b), the Panel may take into
account additional factors in determining if there is evidence of bad faith
registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Respondent is
using the <fossil-watch.org> domain name to resolve to a website
that gives the impression of being sponsored by Complainant, because the
website offers Complainant’s FOSSIL watches for sale and displays Complainant’s
FOSSIL logo. Additionally, Respondent’s
website features information about Complainant’s business that has been copied
directly from Complainant’s FOSSIL website.
Thus, Respondent’s use of the disputed domain name to pass itself off as
Complainant is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See American Int’l
Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that the disputed domain name was registered and used in bad faith where
Respondent hosted a website that “duplicated Complainant’s mark and logo,
giving every appearance of being associated or affiliated with Complainant’s
business . . . In a nutshell,
Respondent used the disputed domain name to perpetrate a fraud”); see also
Fendi Adele S.r.l. v. O’Flynn,
D2000-1226 (WIPO Nov. 13, 2000) (transferring the domain name
<fendiboutique.com> where the likelihood of confusion with the trademark
FENDI is increased since Complainant’s fashion products are typically sold in
boutiques and where Respondent obviously tried (or threatened to try) to pass
himself off as a legitimate source for FENDI products).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <fossil-watch.org> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
November 9, 2004
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