DECISION

 

WBQ IP LLC v. Josh Adrien / Watchbox Official

Claim Number: FA2501002134121

 

PARTIES

Complainant is WBQ IP LLC ("Complainant"), represented by Janet C. Moreira of Caldera Law, Florida, USA. Respondent is Josh Adrien / Watchbox Official ("Respondent"), Alabama, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <watchboxofficial.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Georges Nahitchevansky as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to Forum electronically on January 8, 2025; Forum received payment on January 8, 2025.

 

On January 8, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <watchboxofficial.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2025 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@watchboxofficial.com. Also on January 13, 2025, 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 February 3, 2025.

 

On February 4, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Georges Nahitchevansky as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it operates a watch and jewelry company that has been in business in the United States and internationally since 1916.

Complainant maintains that it has used the mark WATCHBOX since 2015 in connection with the promotion and sale of jewelry, watches and related goods and services. Complainant states that while it has changed some of its WATCHBOX branding it continues to make some limited use of the WATCHBOX mark and that the WATCHBOX mark still enjoys a strong reputation amongst the consuming public.

 

Complainant owns several United States trademark registrations for WATCHBOX (Registration Nos. 5,577,461, 5,578,649, 5,518,414 and 5,995,947, most of which issued to registration in 2018.

 

Complainant contends that Respondent registered the disputed domain name on December 11, 2024 a day after Complainant prevailed in a separate proceeding involving the domain name <watchboxglobal.com>, WBQ IP LLC v. Dion Thomas / Watchbox Global, FA 2127983 (Forum Dec. 10, 2024). Complainant further contends that Respondent is connected to the Respondent in that prior UDRP proceeding. Complainant also asserts that it learned about the registration of the disputed domain name "through clients that were confused by the copycat website" posted at the disputed domain name. Complainant's counsel sent Respondent a demand letter on December 28, 2024. Respondent does not appear to have responded to that letter.

 

Complainant argues that the disputed domain name is confusingly similar to Complainant's WATCHBOX mark as it incorporates the mark in its entirety, merely adding the word "official," a descriptive word that identifies the scope of services associated with Complainant's business. Complainant cites prior UDRP cases to support its contentions.

 

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name as Respondent (i) is not licensed or otherwise authorized by Complainant to use the WATCHBOX mark, (ii) is not commonly known by the WATCHBOX mark, and (ii) is using the disputed domain name to attract and redirect users to Respondent's website to purportedly sell luxury watches for Respondent's commercial gain.  Complainant cites prior UDRP cases to support its contentions.

 

Lastly, Complainant asserts that Respondent has registered and used the disputed domain name in bad faith because Respondent had actual knowledge of Complainant's WATCHBOX mark given that Respondent registered the disputed domain name a day after losing a separate UDRP proceeding concerning the <watchboxglobal.com> domain name and did so to continue to attract and redirect consumers to Respondent's website to offer luxury watches in violation of Complainant's rights in its WATCHBOX mark. Complainant cites prior UDRP case to support its contentions.

 

B. Respondent

Respondent rejects Complainant's contentions.

 

Respondent states it did not register of use the disputed domain name in bad faith, but did so for a legitimate purpose and not to mislead anyone into thinking it is connected to Complainant. In that regard, Respondent asserts that a disclaimer is posted on its website that provides as follows

 

        This site, including its owners, operators, and developers, is not affiliated with or endorsed by any watch or jewelry brand or their subsidiaries in any way. Additionally, WatchBox Official is not affiliated with The 1916 Company (formerly WatchBox) or its subsidiary WBQ IP LLC, nor are there any associations between these entities and "WatchBox Official."

 

Respondent also contends that "'Watchbox' as a term can be descriptive of a general concept and is not exclusive to WBQ IP LLC's brand." Respondent further contends that the purpose of its website is distinct from the operations of Complainant and that it has not sought to confuse customers or to interfere with the business of Complainant.

 

FINDINGS

Complainant holds trademark rights for the WATCHBOX mark. The disputed domain name is confusingly similar to Complainant's WATCHBOX mark. Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and has used the domain name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The disputed domain name incorporates Complainant's WATCHBOX mark in its entirety, and merely adds the common word "official" at the tail of the disputed domain name along with the ".com" gTLD. Under Paragraph 4(a)(i), adding a gTLD and a common or descriptive word is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word "advisors" and the gTLD ".com" did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

Given that the first element is essentially a standing requirement, because Complainant's claimed mark is fully incorporated and clearly recognizable at the head of the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark for purposes of Paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii) of the Policy, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"); see also Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

Here, there is no dispute that Respondent has no license or authorization from Complainant to use the WATCHBOX mark for services that either compete with or are related to those offered by Complainant. Moreover, it is unlikely that Respondent is commonly known by the disputed domain or by the WATCHBOX name and mark. While Respondent's website claims that it has been in business in Florida since 2017, Respondent provided no evidence to support that contention or that it has rights in the mark and name WATCHBOX.  Moreover, a company search in Florida conducted by Complainant found no records for a "Watchbox Official" company. In all, the Panel is of the view that Respondent has no rights in and is not commonly known by the WATCHBOX name and mark.

 

Additionally, there is no dispute that Respondent is currently using the disputed domain name as a redirect to Respondent's website to offer luxury watches. In that regard, the Panel notes that Respondent's website is quite similar to the website that Respondent previously posted at the <watchboxglobal.com> domain name. A comparison of Respondent's website at the disputed domain with archival pages from the website that was posted at <watchboxglobal.com>, which are publicly available through <archive.org> (the "Wayback Machine"), reveals that Respondent's current website shares much identical text, images and layout with the website previously posted at <watchboxglobal.com>. Needless to say, it appears, as Complainant contends, that after Respondent lost the UDRP proceeding involving the <watchboxglobal.com> domain name, Respondent simply registered the disputed domain name to resume its activities and to attract and redirect web users to it website offering luxury watches.

 

Respondent does not address the prior UDRP proceeding or a subsequent demand letter sent by Complainant, but justifies its actions by claiming its actions are legitimate because it has posted a disclaimer on its website and because it believes the term "watchbox" "can be a descriptive of a general concept." Both contentions, however, are unavailing. Respondent's claimed disclaimer appears are the very bottom of Respondent's website and requires a user to scroll down past many images and text before reaching the disclaimer which consists of several sentences concerning the lack of connection of the website to the watch brands being promoted before advising that the website is not affiliated with Complainant. In all, the disclaimer is not prominent, as Respondent suggests, but is buried in Respondent's website and likely never seen by consumers.

 

As to Respondent's claim that the term "WatchBox" can be descriptive of a general concept, the Panel recognizes that "watchbox" is a common term that refers to a physical container for holding watches. However, Respondent's use of "watchbox" here is not in its common definition and meaning. Rather, Respondent is using WATCHBOX OFFICIAL as a brand to promote its website offering luxury watches. That use essentially impersonates Complainant and is meant to exploit Complainant's WATCHBOX brand for Respondent's benefit. Such use is not legitimate.

 

And while Complainant appears to have recently moved away from its WATCHBOX brand to some extent, such does not provide Respondent with a right to simply use Complainant's WATCHBOX brand, and the residual goodwill that may attach to such, to attract and redirect consumers to its website for Respondent's profit. Complainant still owns trademark registrations for its WATCHBOX mark and thus, for now, enjoys rights in the WATCHBOX mark in connection with its jewelry and watch business.

 

Based on the available record, the Panel finds the second element of the Policy has been established in Complainant's favor.

 

Registration and Use in Bad Faith

The Panel finds that, at the time of registration of the disputed domain name in December 2024, Respondent had actual knowledge of Complainant's WATCHBOX mark given the prior UDRP concerning the <watchboxglobal.com> domain name. Certainly the fact that Respondent registered the disputed domain name after losing that proceeding to post a substantially similar website and included a purported disclaimer at the bottom of its website, further confirms that Respondent was well aware of Complainant and its WATCHBOX mark and simply ignored such rights to continue its complained of activities.

 

While Respondent might enjoy a limited right to make a textual, fair use descriptive use of "watchbox" in its common meaning on its website, that is not how Respondent used WATCHBOX. Instead, Respondent knowingly registered and used the disputed domain name, that is likely to be seen by the relevant consumers as connected to Complainant, in order to attract and redirect consumers to Respondent's website which offers competing or related services. To be sure, the use of a disputed domain name based on the mark of a competitor to offer products or services similar to those of the competitor demonstrates an intent to attract internet users for commercial gain under Paragraph 4(b)(iv) of the Policy. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)."); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) ("Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.").

 

To be sure, even if Complainant's rights in WATCHBOX may now be more limited given its partial rebranding, such does not provide a competitor with a right to use the exact mark in a domain name for purposes of offering competing or related services. Respondent knew better and should have stayed away from Complainant's WATCHBOX mark when registering the disputed domain name, particularly after losing the prior UDRP proceeding. Instead, Respondent redoubled on its efforts to opportunistically use Complainant's WATCHBOX mark to promote its services for Respondent's profit. As such, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Paragraph 4(b)(iv) of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <watchboxofficial.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Georges Nahitchevansky, Panelist

Dated: February 17, 2025