Fossil, Inc. v. Amorvine Global Ltd. and John Bell
Claim Number: FA0704000954070
Complainant is Fossil, Inc. (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <fossil-watch.info>, registered with Go Daddy Software.
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 National Arbitration Forum electronically on April 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 5, 2007.
On April 5, 2007, Go Daddy Software confirmed by e-mail to the National Arbitration Forum that the <fossil-watch.info> domain name is registered with Go Daddy Software and that Respondent is the current registrant of the name. Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 April 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 2007, 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.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 3, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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." 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <fossil-watch.info> domain name is confusingly similar to Complainant’s FOSSIL mark.
2. Respondent does not have any rights or legitimate interests in the <fossil-watch.info> domain name.
3. Respondent registered and used the <fossil-watch.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Fossil, Inc., holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FOSSIL mark (i.e., Reg. No. 2,128,773 issued January 13, 1998 and Reg. No. 2,599,215 issued July 23, 2002). Complainant uses the FOSSIL mark in connection with the sale of goods and services, including watches, jewelry, fashion accessories, and clothing. Complainant also owns several retail stores under the FOSSIL mark. Complainant has registered the <fossil.com> domain name which it uses in connection with the sale of its watches and other goods.
Respondent registered the <fossil-watch.info> domain name on March 14, 2007. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which resolves itself to a website displaying adult-oriented content under Complainant’s FOSSIL mark.
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. 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.”).
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 rights in the FOSSIL mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <fossil-watch.info>
domain name is confusingly similar to Complainant’s FOSSIL mark because it uses
the mark in its entirety and merely adds a hyphen along with the descriptive
word “watch” to it. The word added
describes Complainant’s business, which includes the sale of watches. The Panel finds that the addition of a hyphen
and the term “watch” does not alter Respondent’s domain name sufficiently to negate
the confusingly similar aspects to Complainant’s mark under Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding
confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Caterpillar Inc. v. Quin, D2000-0314
(WIPO June 12, 2000) (finding that the disputed domain names
<caterpillarparts.com> and <caterpillarspares.com> were confusingly
similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because
“the idea suggested by the disputed domain names and the registered trademarks
is that the goods or services offered in association with [the] domain name are
manufactured by or sold by the Complainant or one of the Complainants [sic]
approved distributors. The disputed trademarks contain one distinct component,
the word Caterpillar”); see also Pep Boys Manny,
Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3,
2000) (finding that a hyphen between words of the complainant’s registered mark
is confusingly similar).
Additionally, Respondent has added the generic top level domain (“gTLD”) “.info” to Complainant’s mark. As panels have previously held, the mere addition of a gTLD does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisified.
Complainant alleges that Respondent does not have rights or legitimate interests in the <fossil-watch.info> domain name. Complainant’s submission establishes a prima facie case which shifts the burden to Respondent to prove that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel assumes that Respondent does not have rights or legitimate interests here because Respondent has failed to respond to the Complaint. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will review all available evidence in determining whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant contends that Respondent is using the <fossil-watch.info> domain name to redirect Internet users to Respondent’s website which resolves to a website displaying adult-oriented content. Respondent’s use of the domain name to display adult-oriented content is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a website featuring adult-oriented material did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Am. Online, Inc. v. Boch, FA 209902 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with adult-oriented material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”).
Additionally, Respondent offers no evidence and there is no
evidence in the record to indicate that Respondent is commonly known by the <fossil-watch.info> domain name. Respondent’s WHOIS information identifies
Respondent as “Amorvine Global Ltd.” and “John Bell.” Therefore, Respondent has failed to establish
rights or legitimate interests in the <fossil-watch.info>
domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name
under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration
information, Respondent is not commonly known by the [<awvacations.com>]
domain name.”); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <fossil-watch.info> domain name, which is confusingly similar to Complainant’s FOSSIL mark, to redirect Internet users to Respondent’s website which resolves to a website displaying adult-oriented content. The Panel finds Respondent’s use of the disputed domain name to display adult-oriented content is evidence of bad faith under Policy ¶ 4(a)(iii). See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to an adult-oriented site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
Additionally, Respondent is using the <fossil-watch.info> domain name to
redirect Internet users to Respondent’s website that displays adult-oriented
content for the assumed profit of Respondent.
The Panel finds that because Respondent’s domain name is confusingly
similar to Complainant’s FOSSIL mark, Internet users may become confused as to
Complainant’s affiliation with the website.
Presumably, Respondent is profiting from this confusion through
click-through-fees. As such, Respondent’s
use of the <fossil-watch.info>
domain name to redirect Internet users to a website displaying adult-oriented
content constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent
has attempted to commercially benefit from the misleading
<qwestwirless.com> domain name by linking the domain name to
adult-oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent
directed Internet users seeking the complainant’s site to its own website for
commercial gain); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where the respondent utilized a
domain name confusingly similar to the complainant’s mark and used a
confusingly similar pornographic depiction of the complainant’s registered
trademark on its website to cause confusion as to the source or affiliation of
the site).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisified.
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.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 17, 2007
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