Omega SA v. Domain Admin
Claim Number: FA1203001437016
Complainant is Omega SA (“Complainant”), represented by David Ewen of Collen IP, Intellectual Property Law, P.C., New York, USA. Respondent is Domain Admin (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omegawatch.us>, registered with CSL Computer Service Langenbach GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2012; the Forum received a hard copy of the Complaint on March 30, 2012.
On March 30, 2012, CSL Computer Service Langenbach GmbH confirmed by e-mail to the National Arbitration Forum that the <omegawatch.us> domain name is registered with CSL Computer Service Langenbach GmbH and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Police (the “Policy”).
On April 2, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 23, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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
1. Complainant owns the OMEGA mark, which it has used since as early as 1894 in connection with horological and timekeeping instruments and retail store services for such goods.
2. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its OMEGA mark (e.g., Reg. No. 566,370 registered November 4, 1952).
3. Complainant sells its OMEGA-branded products through OMEGA-branded boutiques, as well as through authorized third-party retailers.
4. Complainant promotes its watches at its official website at the <omegawatches.com> domain name.
5. The <omegawatch.us> domain name is confusingly similar to Complainant’s OMEGA mark.
6. Respondent uses the disputed domain name in connection with a website selling counterfeit watches.
7. Because Respondent’s domain name is confusingly similar to Complainant’s trademarks and domain name, it is likely that Internet users would mistakenly believe that the <omegawatches.us> domain name is owned by, operated by, or otherwise affiliated with Complainant.
8. Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark.
9. Complainant has twice obtained favorable decisions against Respondent for its prior association of the very same website content with the <omegawatchstore.com> and <omegawatch.me> domain names.
10. Respondent’s use of the disputed domain name to sell counterfeit versions of Complainant’s products disrupts Complainant’s business.
11. Respondent’s use of the disputed domain name in connection with its continued counterfeiting activities constitutes a blatant attempt to capitalize on the goodwill associated with Complainant’s mark for Respondent’s own profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds registered trademarks for the OMEGA mark with the United States Patent and Trademark Office. Respondent did not submit a Response in this proceeding.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant argues that it owns rights in the OMEGA mark because it has used the mark in connection with its watches since 1894 and owns multiple trademark registrations with the USPTO, including Registration Number 566,370 registered on November 4, 1952. A USPTO trademark registration is sufficient to prove rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under UDRP ¶ 4(a)(i) through registration of the mark with the USPTO). Based on this precedent and Complainant’s trademark registrations, the Panel concludes that Complainant has adequately demonstrated rights in the OMEGA mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <omegawatch.us> domain name is confusingly similar to Complainant’s mark because the disputed domain name only adds the descriptive term “watch” and the country-code top-level domain (“ccTLD”) “.us.” Neither the addition of a descriptive term nor the addition of a ccTLD distinguishes the disputed domain name from Complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Assurant, Inc. v. Suchyta, FA 1355537 (Nat. Arb. Forum Dec. 10, 2010) (finding the <assurantdata.us> domain name confusingly similar to the ASSURANT mark despite the addition of a generic term and the ccTLD “.us.”). The Panel therefore concludes that Respondent’s <omegawatch.us> domain name is confusingly similar to Complainant’s OMEGA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent is not commonly known by the disputed domain name, as indicated by the WHOIS information listing “Domain Admin” as the registrant of the disputed domain name. Complainant also asserts that it has not authorized Respondent’s use of the OMEGA trademark on the resolving website. The Panel accordingly holds that Respondent is not commonly known by the disputed domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also 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).
Complainant contends that Respondent uses the <omegawatch.us> domain name in connection with a website selling counterfeit versions of Complainant’s products. Complainant also argues that Respondent has conducted the same counterfeiting activities at two other confusingly similar domain names, as seen in two prior UDRP decisions. See Omega SA v. Domain Admin, DMW2011-0001 (WIPO Mar. 3, 2011); see also Omega SA v. Domain Admin, FA 1302921 (Nat. Arb. Forum Feb. 24, 2010). The Panel finds that selling counterfeit versions of Complainant’s products at Respondent’s resolving website is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Louis Vuitton Malletier S.A. v. Xiaoyu, FA 1222406 (Nat. Arb. Forum Oct. 27, 2008) (determining that disputed domain names resolving to websites offering counterfeit versions of complainant’s products did not satisfy the requirement for a bona fide offering of goods or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and (iii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has previously been involved in two UDRP cases involving Complainant and the OMEGA mark in which the disputed domain names were transferred to Complainant. See Omega SA v. Domain Admin, DMW2011-0001 (WIPO Mar. 3, 2011); see also Omega SA v. Domain Admin, FA 1302921 (Nat. Arb. Forum Feb. 24, 2010). Based on these prior adverse proceedings, the Panel concludes that Respondent has shown a pattern of bad faith registration and use of domain names containing Complainant’s mark according to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)]. The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).
Complainant alleges that Respondent uses the disputed domain name to divert Internet users seeking Complainant’s genuine products and official website in order to sell counterfeit versions of Complainant’s products. Complainant argues that Respondent’s activities disrupt Complainant’s business, which the Panel finds is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See North Face Apparel Corp. v. Ian, FA 1302728 (Nat. Arb. Forum Mar. 17, 2010) (determining that Respondent’s use of the disputed domain name to disrupt Complainant’s business by redirecting consumers to Respondent’s website selling counterfeit goods demonstrated bad faith registration and use under Policy ¶ 4(b)(iii)); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant contends that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by misappropriating Complainant’s OMEGA mark and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and the offered products. Complainant further asserts that Respondent’s use of the <omegawatch.us> domain name in connection with its continued counterfeiting activities constitutes a blatant attempt to capitalize on the goodwill associated with Complainant’s OMEGA mark. Complainant contends that Respondent’s sale of counterfeit products misleads consumers and tarnishes Complainant’s reputation through the sale of cheap counterfeit goods. Complainant alleges that Respondent’s persistence in selling these counterfeit products, despite Complainant’s continued enforcement efforts, leaves little doubt that Respondent registered and uses the <omegawatch.us> domain name in bad faith. The Panel therefore concludes that Respondent’s efforts to misleadingly attract consumers and create confusion for its own profit resulting from the sale of counterfeit goods indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Farouk Sys., Inc. v. Brown, FA 1301736 (Nat. Arb. Forum Feb. 22, 2010) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where “Respondent profits from the sale of counterfeit hair styling products” on the resolving website).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omegawatch.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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