Fossil, Inc. v. cheng gong / chen gong
Claim Number: FA1208001458182
Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is cheng gong / chen gong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossil-bags.net>, registered with Hangzhou E-Business Services Co., Ltd.
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 August 15, 2012. The Complaint was submitted in both Chinese and English.
On August 15, 2012, Hangzhou E-Business Services Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <fossil-bags.net> domain name is registered with Hangzhou E-Business Services Co., Ltd. and that Respondent is the current registrant of the name. Hangzhou E-Business Services Co., Ltd. has verified that Respondent is bound by the Hangzhou E-Business Services Co., Ltd. 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 August 23, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 12, 2012 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@fossil-bags.net. Also on August 23, 2012, the Chinese language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 18, 2012, 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" 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 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.
Language of the Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the owner of numerous proprietary marks used in connection with handbags, watches, jewelry, fashion accessories, leather goods, footwear, sunglasses and clothing.
2. Complainant has registered its FOSSIL mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”), among others:
USPTO Reg. No. 1,582,547 registered February 13, 1990;
SAIC Reg. No. 723,888 registered January 7, 1995;
3. Complainant also owns the <fossil.com> domain name, which generates significant revenue for Complainant.
4. Respondent registered the disputed domain name on June 4, 2012.
5. The disputed domain name is confusingly similar to Complainant’s mark as it contains Complainant’s FOSSIL mark, as well as a hyphen, the generic term “bags,” and the generic top-level domain (“gTLD”) “.net.” These minor changes are not sufficient to differentiate the disputed domain name from the FOSSIL mark.
6. Respondent has no rights or legitimate interests in the disputed domain name.
7. Respondent is not commonly known by the disputed domain name as the WHOIS information identifies Respondent as “cheng gong.”
8. Respondent is not affiliated with Complainant in any way, is not licensed by Complainant to use Complainant’s FOSSIL mark, and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
9. Respondent’s resolving website prominently displays the FOSSIL oval logo and advertises for sale was purport to be FOSSIL branded products, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
10. Respondent’s resolving website attempts to pass itself off as Complainant in order to defraud customers by taking orders for goods and collecting money without actually delivering any products.
11. Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s FOSSIL marks as to the source, sponsorship, affiliation, or endorsement of Respondent by Complainant, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv).
12. Respondent had knowledge of Complainant’s mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Fossil, Inc., is the owner of numerous proprietary marks used in connection with handbags, watches, jewelry, fashion accessories, leather goods, footwear, sunglasses and clothing.
Respondent, cheng / chen gong, registered the disputed domain name on June 4, 2012.
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(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.”).
Complainant has registered its FOSSIL mark with the United States Patent and Trademark Office (“USPTO”) and China’s State Administration for Industry and Commerce (“SAIC”), among others:
USPTO Reg. No. 1,582,547 registered February 13, 1990 &
SAIC Reg. No. 723,888 registered January 7, 1995.
Prior panels have concluded that registration of a mark with the USPTO and the SAIC is sufficient to prove that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Complainant adequately demonstrated its rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <fossil-bags.net> domain name is confusingly similar to Complainant’s mark as it contains Complainant’s FOSSIL mark, as well as a hyphen, the generic term “bags,” and the generic top-level domain (“gTLD”) “.net.” Complainant alleges that these minor changes are not sufficient to differentiate the disputed domain name from the FOSSIL mark. In prior UDRP proceedings, panels have found that the additions of a hyphen, a generic or descriptive term, and a gTLD do not prevent confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). The Panel finds that Respondent’s <fossil-bags.net> is confusingly similar to the FOSSIL mark according to Policy ¶ 4(a)(i).
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. See 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).
Complainant contends that Respondent is not commonly known by the disputed domain name and argues that the WHOIS information identifies the registrant as “cheng gong.” Complainant also asserts that Respondent is not affiliated with Complainant in any way, is not licensed by Complainant to use Complainant’s mark, and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Based on these allegations, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to 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.”).
Complainant asserts that Respondent uses the confusingly similar domain name to lure consumers to the resolving website, which Complainant claims displays the FOSSIL logo and offers what appear to be FOSSIL-branded goods for sale. Complainant contends that Respondent takes orders for goods and collects money but fails to actually deliver any products. Respondent’s efforts to use Complainant’s mark to divert consumers to the resolving website for Respondent’s own commercial gain is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also alleges that Respondent’s use of the mark in the disputed domain name, the display of the logo on the resolving website, the overall similar design of the resolving website, the sale of Complainant’s products, and the references to Complainant on the Contact page and elsewhere are intended to pass Respondent off as Complainant and mislead the public into believing that the site is operated by Complainant. The Panel concludes that Respondent’s efforts to pass itself off as Complainant show a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant argues that Respondent uses the <fossil-bags.net> domain name to intentionally attract, for commercial gain, Internet users to the resolving website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent. Complainant asserts that Respondent’s use of the FOSSIL logo and its references to itself as “Fossil Outlet” and “Fossil” give the false impression of an affiliation with Complainant and its famous mark. Complainant alleges that Respondent’s resolving website appears to sell legitimate FOSSIL products but instead apparently takes consumers’ money without delivering any goods. Complainant contends that these actions show that Respondent has attempted to benefit unfairly and opportunistically from the goodwill associated with Complainant’s FOSSIL mark, which the Panel determines is evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant alleges that Respondent registered the disputed domain name with knowledge of Complainant’s rights in the mark, which Complainant argues is further evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). Complainant argues that at the time of the disputed domain name’s registration, the FOSSIL mark was unquestionably famous and familiar to Internet users. The Panel concludes that Respondent had actual knowledge of Complainant’s rights and determine that Respondent accordingly registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See BMC Software, Inc. v. Dominic Anschultz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive knowledge will usually not support a finding of bad faith); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Complainant 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-bags.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 2, 2012
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