Fossil Group, Inc. v. Client Care / Web Commerce Communications Limited
Claim Number: FA2110001967582
Complainant is Fossil Group, Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Client Care / Web Commerce Communications Limited ("Respondent"), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilwatchesstore.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 4, 2021; the Forum received payment on October 4, 2021.
On October 8, 2021, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by email to the Forum that the <fossilwatchesstore.com> domain name is registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the name. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 October 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@fossilwatchesstore.com. Also on October 11, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 November 8, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 sells watches, jewelry, accessories, and related items online and through retail stores. Complainant has used the FOSSIL trademark in connection with this business continuously since at least as early as 1985, and asserts that the mark has become famous as a result of extensive use and promotion. Complainant owns longstanding trademark registrations for FOSSIL in both standard character and stylized form in the United States, Malaysia, and many other jurisdictions.
Respondent registered the disputed domain name in October 2021. The domain name is being used for a website that prominently displays the FOSSIL mark and images depicting what appear to be Complainant's FOSSIL branded products, using photos and descriptions copied from Complainant's website. Complainant states that the prices listed on Respondent's website are "highly suspect" and asserts that the site likely is being used for a phishing scheme, attempting to mislead consumers into believing that the site is associated with Complainant and thereby obtain their credit card information. The website does not appear to include any information regarding a connection with Complainant or lack thereof; the copyright statement in the footer refers only to "FOSSIL WATCHESStore."
Complainant contends on the above grounds that the disputed domain name <fossilwatchesstore.com> is confusingly similar to its FOSSIL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <fossilwatchesstore.com> incorporates Complainant's registered FOSSIL trademark, adding the generic terms "watches" and "store" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Fossil Group, Inc. v. Olivia Lim, FA 1514644 (Forum Sept. 20, 2013) (finding <fossilwatches.info> confusingly similar to FOSSIL); Burberry Ltd. v. Bluehost.com / Dong Xue Mei, D2011-0132 (WIPO Apr. 4, 2011) (finding <burberrywatchesstore.com> confusingly similar to BURBERRY). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a commercial website that passes off as Complainant, using Complainant's mark and content copied from Complainant's website to create the false appearance of a connection to Complainant, and purporting to offer what appear to be Complainant's products for sale. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Wahl Clipper Corp. v. Ya Lei Zhu, FA 1932888 (Forum Mar. 18, 2021) (finding lack of rights or interests in similar circumstances); see also Fossil Group, Inc. v. Jessyca Roseberry, FA 1865310 (Forum Nov. 4, 2019) (finding lack of rights or interests arising from use of domain name for website impersonating complainant and likely part of a phishing or other fraudulent scheme).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's famous mark and is using it to pass off as Complainant, promoting what likely are counterfeit or nonexistent products for sale in a manner clearly designed to create the false impression of association or affiliation with Complainant, and possibly phishing for consumers' personal financial information. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Wahl Clipper Corp. v. Ya Lei Zhu, supra (finding bad faith in similar circumstances); Fossil Group, Inc. v. Jessyca Roseberry, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fossilwatchesstore.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 15, 2021
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