Fossil Group, Inc. v. Enadin Kucevic
Claim Number: FA1501001599092
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Enadin Kucevic (“Respondent”), Serbia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <michele.watch>, registered with Dynadot, LLC.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2015; the National Arbitration Forum received payment on January 9, 2015.
On January 12, 2015, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <michele.watch> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, LLC 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 January 13, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2015 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@michele.watch. Also on January 13, 2015, 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.
A timely Response was received and determined to be complete on January 14, 2015.
On January 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant in its Complaint has made the following contentions:
· Complainant, Fossil Group, Inc., is claimed to be the owner of numerous proprietary marks stated to be used in connection with watches, jewellery, fashion accessories, handbags, leather goods and clothing as well as retail stores featuring watches, jewellery, fashion accessories, handbags, leather goods and clothing and other related goods and services. Complainant contends that its product offerings include extensive line of watches and watch bands sold under its MICHELE brand. Complainant also claims that it has used the mark MICHELE for the first time as early as 1982 and has been continuously using it thereafter, in the United States and around the world.
· Complainant claims to be the owner of numerous registrations for the mark “MICHELE” and other marks containing “MICHELE” on the Principal Register of USPTO and in jurisdictions throughout the world, including in Serbia where the Respondent resides. Some of the Complainant’s registrations for the mark MICHELE (list attached as Exhibit-B) are given below:
(a) US Registration No.3237434 for the mark MICHELE registered in 2007 for watches in Class 14;
(b) International Registration No. 528594 for the mark MICHELE registered in 1988 for goods in Class 14, including watches;
(c) International Registration No. 702980 (which designates Serbia among other countries) for the mark MICHELE registered in 1998 for goods in Class 14, including watches; and
(d) Serbia Registration No. 68165 for the mark MICHELE registered in September of 2014 for watches and jewelry.
· Complainant further claims to have registered the domain name <Michele.com> in 1998. In this regard, Complainant has attached with the Complainant as Exhibits-C&D, copies of WHOIS data showing Complainant’s ownership of the domain name <Michele.com> as also its home page and representative pages from its domain name <Michele.com> showing some of the MICHELE branded watches.
· Complainant claims that in addition to its sales of MICHELE watches through retail stores such as, Neiman Marcus, Saks Fifth Avenue, and Nordstrom, Complainant also generates significant revenue from sales through the Complainant’s official website for the MICHELE branded watches at www.michele.com.
· Complainant contends that it has invested substantial efforts and expenses to develop goodwill in the MICHELE Marks and to cause consumers throughout the world to recognize the MICHELE Marks as distinctly and exclusively designating products associated with the Complainant. Complainant contends that more than 25 years of its promotional efforts have made the MICHELE Marks famous and distinctive.
Contentions regarding Respondent’s disputed domain name “michele.watch” being identical to Complainant's "MICHELE" marks & domain name <michele.com>
· The domain name <michele.watch> is identical or confusingly similar to Complainant’s famous MICHELE mark, which was registered as a trademark long before Respondent registered the disputed domain name on December 4, 2014. Complainant contends that its MICHELE mark has been used for more than 25 years and had become famous long prior to Respondent’s registration of the disputed domain name.
· Respondent’s domain name contains Complainant’s famous “MICHELE” mark in its entirety, combined with the gTLD “.watch.” These changes are not sufficient to distinguish the domain name from the MICHELE Mark. In this regard, it has relied upon the following decisions of this Forum:
(i) Tempus International Corp. v. LaPorte Holdings, Inc, FA 437100 (Nat. Arb. Forum, April 21, 2005) – holding that <michelewatch.com> and <michellewatch.com> confusingly similar to the MICHELE trademark.
(ii) Fossil, Inc. v. Juan Cabral, FA1469662 (Nat. Arb. Forum, Dec. 18, 2012) – holding that <fossil-outlet.com> confusing similar to the FOSSIL mark and finding in particular that the addition of the word “outlet” can only imply that the domain name is an official FOSSIL domain name leading to an official FOSSIL website in the nature of a retail outlet, neither of which is true.
(iii) Fossil, Inc. v. cheng gong, FA 1458182 (Nat. Arb. Forum, October 2, 2012) – holding that <fossil-bags.net> confusingly similar to the FOSSIL mark.
· Complainant contends that the inclusion of the top level domain name, “.watch” has no effect on the determination of whether the domain name is confusingly similar to Complainant’s marks. The mere addition of a gTLD does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy 4(a)(i). In this regard, Complainant relies upon the decision of this Forum in - Fossil, Inc. v. Amorvine Global Ltd., FA954070 (Nat. Arb. Forum, May 17, 2007) and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Nat. Arb. Forum May 14, 2009) – holding that “the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”. Complainant contends that the addition of the word “.watch” actually enhances the likelihood that consumers will confuse the disputed domain name because it relates specifically to the type of product, namely, a MICHELE watch. Accordingly, the domain name is confusingly similar to Complainant’s MICHELE Mark under Policy 4(a)(i).
Contentions regarding Respondent having no rights or legitimate interests in the disputed domain name <michele.watch>
· Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s MICHELE mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
· WHOIS identifies Respondent as “Enadin Kucevic”. Respondent is not commonly known by Complainant’s MICHELE mark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s MICHELE mark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Complainant relies upon the following decisions of this Forum:
(i) Fossil, Inc. v. Juan Cabral, FA1469662 (Nat. Arb. Forum, Dec. 18, 2012) - holding that where WHOIS identifies a person or entity with no affiliation with Fossil that Respondent is not commonly known by the domain name according to Policy 4(c)(ii).
(ii) Fossil, Inc. v. cheng gong, FA 1458182 (Nat. Arb. Forum, October 2, 2012) - holding that Respondent’s lack of affiliation with Fossil showed that he was not commonly known by the disputed domain name and thus lacked rights and legitimate interests in the domain name.
(iii) Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) - holding that no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name.
(iv) Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) - holding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy 4(c)(ii) does not apply.
· Complainant contends that a click at the disputed domain name takes to a site which says “Michele Watch Coming Soon…” but otherwise has no contents (Exhibit-E). Further, the Respondent is offering the disputed domain name for sale for a minimum threshold amount of $9,999.00 US Dollars (Exhibit F).
· Complainant contends that acquiring a domain name containing Complainant’s famous MICHELE trademark in order to sell it, does not constitute a legitimate interest or bona fide use. In this regard, Complainant relies upon the decisions of this Forum in:
(i) Microsoft Corporation v. Chiou Ji-an, FA 1521025 (Nat. Arb. Forum, Oct. 3, 2013) – wherein while noting that previous panels have held that the general offering of a domain name for sale, as well as the specific listing of a domain name for a given price, evidences a lack of rights or legitimate interests in the domain name because this conduct illustrates the respondent’s readiness to dispense the domain name.
(ii) Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) - holding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy 4(a)(ii).
(iii) Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) - holding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark.
(iv) Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) - holding that no rights or legitimate interests pursuant to Policy 4(c)(i) or (iii) where the respondent registered the domain name with the intention of selling its rights.
(v) Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) -holding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name.
(vi) Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) - holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name.
(vii) Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) - holding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use.
· Complainant contends that having regard to the above reasons, the Respondent has no rights or legitimate interests in the <michele.watch> domain name.
Contentions regarding Respondent’s registration and use of the disputed domain name <Michele.watch> in bad faith, pursuant to ICANN Policy 4(a)(iii)
· Complainant contends that the Respondent has registered the disputed domain name in bad faith. At the time when the Respondent had registered the disputed domain name, Complainant’s MICHELE mark was unquestionably famous and familiar to Internet users. Complainant further contends that the Respondent was not only familiar with Complainant’s famous trademark at the time of registration of the disputed domain name, but it has intentionally adopted a name identical to the MICHELE Mark in order to create an association with Complainant and its products.
· Complainant contends that the Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its famous mark, is an evidence of bad faith registration and use with regard to Policy 4(a)(iii). In this regard, Complainant has relied upon the following decisions of this Forum:
(i) Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) - holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”.
(ii) Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) - holding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse".
(iii) Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) - holding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name.
(iv) Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) - holding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith.
· Complainant further contends that the Respondent is offering the disputed domain name for sale for a minimum of $9,999.00 USD. It is well-established that circumstances indicating that a Respondent has registered or acquired a domain name primarily for the purpose of selling the name to the corresponding trademark holder support a finding of bad faith, and that even general offers for sale indicate bad faith. While relying upon ICANN Rule 4(b)(i), Complainant relied upon the following decisions of this Forum in –
(i) Microsoft Corporation v. Chiou Ji-an, FA 1521025 (Nat. Arb. Forum, Oct. 3, 2013) - holding that Respondent’s bad faith may be inferred from Respondent’s decision to place the domain names up for auction to the public.
(ii) Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) - holding that “Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy 4(b)(i).”
(iii) Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) – holding that “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy 4(b)(i).”
· Complainant further contends that the Respondent has registered a number of other domain names (Exhibit-G) which incorporate well known watch brands, including <bering.watch>, <breda.watch>, <breil.watch>, <croton.watch>, <stuhrling.watch>, <swisslegend.watch>, and <timeforce.watch>, along with other domains that incorporate well known marks such as <clique.vodka> and <zoes.kitchen>. All these are being offered for sale by Respondent.
· Complaint concludes that having regard to above it becomes clear that Respondent has registered and used the domain name in bad faith pursuant to Policy4(a)(iii).
B. Respondent
Respondent in its response to the Complaint made the following submissions:
· Respondent submits that he had paid for the domain name and owns it. The domain name was marked as "premium" as he did not pay an ordinary price but paid a higher fee.
· Respondent submits that he chose "Michele" and fixed extension “.watch” to it.
· Respondent submits that he had made a deal with a girl alias Michele to be webmaster of her for % of her online pole dance show. So, he wanted to use the website for adult show.
· Respondent contends that he is a Serbian and in Serbia Fossil (Complainant) has registered for word "michele" in intellectual rights just for watches and jewellery and does not have any rights on domains. The Respondent submits that the disputed domain name was to be intended to be used for adult live show (lap dance, pole dance, bar dance).
· Respondent claims that Complainant does not have a trademark right on everything that is named MICHELE. Although the disputed domain name uses extension “.watch”, yet it does not represent anything to do with Complainant.
· Respondent submits that the use of the disputed domain name “michele.watch” is not in bad faith. The website was under construction and it was finished on sedo by his brother typo.
· Respondent contends that he had tried to buy www.michele.xxx for his client but it was taken before he attempted to do so. Respondent further contends that if he or any of his clients use the disputed domain in bad faith (selling fake watches or selling any watches or whatever fossil do) courts should be approached for deciding the issue.
· Respondent alleges that if he is forced to lose the disputed domain name this way, it would be like a robbery.
· Respondent contends that he does not need a company to register a trademark or to buy a domain, as he is the webmaster.
· Respondent contends that what is the point of using extension if only one company can own one word. This would mean monopoly.
· Respondent cited the following names of domain names which use “michele” mark, as was being used by Respondent and which domains are not even owned by the Complainant:
(i) http://www.michele.net/
(ii) http://www.michele.org/
(iii) http://www.michele.us/
(iv) http://www.michele.info/
(v) http://www.michele.in/
(vi) http://www.michele.club/
(vii) http://www.michele.nl/weblog/
(viii) http://www.michele.ca/
(ix) http://www.michele.link/
· Respondent contends that the word “Michele” is pronounced as ‘mi-shell’, is an English female given name that comes from the French “Michèle.” It is a variant spelling of the more common (and identically pronounced) name Michelle. Michele, pronounced ‘mee-KEH-leh’, is also an Italian male given name, akin to the English male name Michael.
· Respondent in the response also raises the issue of jurisdiction. It contends that since he is a Serbian, this Forum is neither have the jurisdiction upon him nor any US Law applicable upon him.
· Complainant contends that it has rights in the disputed domain name <michele.watch> through its use and various registrations with the USPTO. Complainant claims that it has used and registered its MICHELE marks and Michele.com for watches, jewellery, handbags, and other goods.
· Respondent contends that the disputed domain name <michele.watch> is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s mark. Registration and use of disputed domain name comprising such common terms cannot be said to be done in bad faith.
· The Panel finds that the use of the domain name <michele.watch> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name <michele.watch> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
Preliminary Issue : Jurisdiction
Respondent claims that it has not agreed to arbitration. The Panel observes that the UDRP process is not arbitration and that Respondent consented to be bound to the UDRP as an administrative hearing when it had executed the Registration Agreement with the Registrar. The verification e-mail from Dynadot reflects that the UDRP applies to Respondent’s registration of the disputed domain name.
In this regard, the Panel finds strength from the decision of an earlier WIPO panel in Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005) holding that “After having acquired the disputed domain name, the Respondent became party to the registration agreement and all its terms and conditions… [therefore] the Respondent is bound by the same terms and conditions than its predecessor in title even if it has not necessarily registered the disputed domain name directly or personally with the Registrar.” While Policy 4(k) allows the parties to litigate in court, instead of, or in addition to, the UDRP, the Complainant has decided to utilize the UDRP’s administrative hearing option. In this view of the matter, the Panel finds that it would be within its jurisdiction to decide the present issue within the UDRP Policy as the Respondent is bound by the terms and conditions of the Registration Agreement signed by it under the UDRP Policy and therefore, bound to settle the instant dispute strictly in terms of the rules/guidelines of the UDRP Policy.
The Panel observes that the Complainant argues that MICHELE mark is used to identify watches, jewelry, handbags, and other goods. The MICHELE mark is registered at the USPTO (e.g., Reg. No. 3,237,434, registered May 1, 2007) which sufficiently showcases Complainant’s rights in the trademark under Policy 4(a)(i). In this regard, the Panel relies upon the decision of this Panel in W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) - holding that “the Panel finds that USPTO registration is sufficient to establish these [Policy 4(a)(i)] rights even when Respondent lives or operates in a different country.”
Complainant contends that the <michele.watch> takes the entire mark and uses the confusingly similar TLD “.watch.” The Panel agrees that the addition of “.watch” to the mark in forming this domain name illustrates how confusingly similar the disputed domain name is pursuant to Policy 4(a)(i). In this regard the Panel relies upon the decision of this Forum in - DD IP Holder LLC v. Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) – holding that “the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”
Therefore, the Panel concludes that Respondent’s disputed domain name <michele.watches> is identical and confusingly similar to Complainant’s mark “MICHELE” and domain name “michele.com” pursuant to Policy 4(a)(i).
The Panel observes that 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 shifts to Respondent to show it does have rights or legitimate interests. In this regard the Panel finds the following decisions of this Forum to be relevant:
(i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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.
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “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.
The Panel observes the Complainant claims that Respondent has never been commonly known by this <michele.watch> domain name but is in fact one “Enadin Kucevic.” The Panel finds that Respondent is not known by this domain name based on all evidence available, and Respondent fails to suggest as such in its Response. In this regard, the Panel relies upon the decision of this Forum in St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) - concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name.
The Panel observes that the Complainant has claimed in the Complaint that the Respondent has only hosted a “Coming Soon” page on the domain name’s website. The Panel notes that the domain name resolves to a WordPress template explaining that the actual website has not yet been developed. The Panel agrees that the facts have no basis for a finding that any demonstrable preparation has been made to use the domain name in connection with a Policy 4(c)(i) bona fide offering of goods or services.
The panel, in this regard, relies upon the decision of this Forum in Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) – holding that “Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy 4(c)(iii).”
The Panel observes that Complainant has argued (Ex. F) that Respondent has offered the domain name off for $9,999 USD. The Panel agrees that the Sedo-backed auction requires a minimum bid of at least $9,999. The Panel finds that Respondent’s interest in selling off the disputed domain name goes against a finding of a Policy 4(c)(i) bona fide offering. In this regard, the Panel refers to the decision of this Forum in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) - holding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name.
Having regard to the above, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name <michele.watch> pursuant to Policy 4(a)(ii).
The Panel observes that the Complainant has alleged in the Complaint that the Respondent appears to have registered this domain name primarily to sell it off for $9,999. The Panel finds itself in agreement that the Sedo-backed auction is evidence of a Policy 4(b)(i) intent to register the domain name primarily for purposes of resale. The Panel, in this regard, relies upon the decision of this Forum in - George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) - concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name.
The Panel observes that the Respondent has contended that it is not trading on MICHELE but instead wants to host an adult-oriented website for an adult performer named “Michele.” Respondent claims that the domain name thus means that users can “watch” the adult performance of “Michele.” This Panel finds that ordinarily uses of domain names for adult oriented content are not legitimate when a trademark is involved.
Complainant claims that Respondent registered the <michele.watch> domain name with knowledge of Complainant’s rights under Policy 4(a)(iii). While earlier panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that the Respondent has registered the disputed domain name in bad faith under Policy 4(a)(iii). In this regard, the Panel refers to the following decisions of this Forum:
(i) The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) – holding that "As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."
(ii) Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) - holding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration.”
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <michele.watch> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: January 24, 2015
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