Fossil, Inc. v. Zhang qianqian / zhangqianqian zhangqianqian
Claim Number: FA1209001462058
Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Zhang qianqian / zhangqianqian zhangqianqian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <fossilbagsale.com>, registered with Bizcn.com, Inc., and <michaelkors-watches.net>, registered with and 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2012; the National Arbitration Forum received payment on September 10, 2012. The Complaint was submitted in both Chinese and English.
On September 12, 2012, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fossilbagsale.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, 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 September 19, 2012, Hangzhou E-Business Services Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <michaelkors-watches.net> domain name is registered with Hangzhou E-Business Services Co., Ltd. and that Respondents 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 September 24, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 15, 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@fossilbagsale.com, postmaster@michaelkors-watches.net. Also on September 24, 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 October 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Complainant owns various proprietary marks used in connection with handbags, accessories, jewelry, watches, leather goods and clothing, as well as retail stores featuring those items. Complainant owns the FOSSIL trademark, which it registered with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,559,950 registered October 10, 1989). Complainant owns numerous other registrations for its FOSSIL trademark with agencies worldwide, including China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 713,341 registered October 28, 1994), IP Australia (“IPA”) (e.g., Reg. No. A560, 334 registered July 25, 1993), and the German Patent and Trade Mark Office (“DPMA”) (e.g., Reg. No. 1,159,076 registered May 17, 1990). See Exhibit B. Complainant owns the domain name <fossil.com>, at which it provides information regarding its goods sold under the FOSSIL mark.
2. Complainant also manufactures watches for third parties under their own brands, including the brand MICHAEL KORS. The MICHAEL KORS mark represents a fashion designer whose creations in women’s apparel are sold in department stores throughout North America and in retail stores internationally. The MICHAEL KORS trademark includes watches, handbags, eyewear, jewelry and shoes. The MICHAEL KORS mark has been registered with the USPTO (Reg. No. 3,160,981 registered October 17, 2006), as well as with the SAIC (e.g. Reg. No. 3,603,884 registered January 21, 2005). These registrations are owned by Michael Kors, L.L.C.; however, Complainant was given written authorization to move forward with this action on behalf of Michael Kors, L.L.C. and obtain a transfer of the <michaelkors-watches.net> domain name. See Exhibit H. Complainant is the worldwide licensee for the MICHAEL KORS brand in relation to watches, and as such, Complainant claims the right to assert trademark rights in order to protect the mark.
3. Respondent registered the <fossilbagsale.com> and <michaelkors-watches.net> domain names on July 4, 2012 and Respondent does not use either to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
4. Both the <fossilbagsale.com> and <michaelkors-watches.net> domain names are confusingly similar to the marks in which Complainant has rights.
5. Respondent has no rights or legitimate interests in respect of either of the domain names.
6. Respondent is not commonly known by either of the disputed domain names. The <fossilbagsale.com> domain name resolves to a website that imitates Complainant’s artwork and product descriptions from Complainant’s website. The <michaelkors-watches.net> domain name resolves to a website that purports to be an online store that uses photographs and product descriptions from the official Michael Kors website. Respondent uses both domain names to sell counterfeit FOSSIL branded handbags and MICHAEL KORS branded watches.
7. Respondent registered and used the <fossilbagsale.com> and <michaelkors-watches.net> domain names in bad faith by disrupting Complainant’s business and by intentionally attempting to attract Internet users by creating confusion in order to make a commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that supplies prestigious goods such as clothing and accessories under its FOSSIL trademark and, under licence, manufactures watches under other trademarks including the MICHAEL KORS trademark.
2. Complainant owns the FOSSIL trademark, which it registered with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,559,950 registered October 10, 1989). Complainant also owns numerous other registrations for its FOSSIL trademark with agencies worldwide, including, in China, where Respondent is domiciled, China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 713,341 registered October 28, 1994). Complainant owns the domain name <fossil.com>, at which it provides information regarding its goods sold under the FOSSIL mark.
3. The MICHAEL KORS trademark includes watches, handbags, eyewear, jewelry and shoes and has been registered with the USPTO (Reg. No. 3,160,981 registered October 17, 2006), as well as with the SAIC (e.g. Reg. No. 3,603,884 registered January 21, 2005). These registrations are owned by Michael Kors, L.L.C. Complainant has been given written authorization by Michael Kors, L.L.C. to institute this proceeding on behalf of Michael Kors, L.L.C. and to proceed with it and obtain a transfer of the <michaelkors-watches.net> domain name from Respondent to Complainant. Complainant has rights in the MICHAEL KORS trademark within the meaning of Policy ¶ 4(a)(i)).
4. Respondent registered the <fossilbagsale.com> and <michaelkors-watches.net> domain names on July 4, 2012. Respondent uses both domain names to make unauthorised sales of goods purporting to be genuine FOSSIL branded handbags and MICHAEL KORS branded watches, but which the Panel finds are probably counterfeit.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in 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, determines that the remainder of the proceedings may be conducted in English.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant asserts rights in the FOSSIL mark through trademark registrations with the USPTO (e.g. Reg. No. 1,559,950 registered October 10, 1989), the SAIC (e.g., Reg. No. 713,341 registered October 28, 1994), the IPA (e.g., Reg. No. A560, 334 registered July 25, 1993) and the DPMA (e.g., Reg. No. 1,159,076 registered May 17, 1990). The Panel concludes that Complainant’s trademark rights are demonstrated by its multiple trademark registrations with numerous international trademark agencies. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant also claims rights in the MICHAEL KORS mark through its licensing agreement with Michael Kors, L.L.C., and a written authorization from Michael Kors, L.L.C. stating that Complainant has the exclusive right to use the MICHAEL KORS brand for watches. The Panel accepts that evidence and holds that the evidence shows that Complainant may institute these proceedings, that it may request an order that the <michaelkors-watches.net> domain name be transferred to Complainant and that Complainant has rights in the MICHAEL KORS mark. Complainant alleges that the MICHAEL KORS mark is registered with the USPTO (Reg. No. 3,160,981 registered October 17, 2006) and with the SAIC (e.g. Reg. No. 3,603,884 registered January 21, 2005). The Panel concludes that the trademark registrations for the MICHAEL KORS mark demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a) (i). 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 Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a) (i)). Further, the Panel finds that Complainant may bring this claim due to its exclusive licensee status with the owner of the MICHAEL KORS mark. See Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (holding that a non-exclusive licensee to a mark has established rights in that mark).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s FOSSIL mark and the MICHAEL KORS mark respectively. Complainant alleges that the <fossilbagsale.com> domain name is confusingly similar to its FOSSIL mark, pointing out that the domain name contains Complainant’s entire FOSSIL mark and adding the generic words “bag” and “sale,” as well as the generic top-level domain (“gTLD”) “.com.” The Panel finds that using the FOSSIL mark, combined with generic terms and a gTLD does not negate the confusing similarity between Complainant’s mark and the <fossilbagsale.com> for the purposes of Policy ¶ 4(a) (i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”).
Complainant also argues that the <michaelkors-watches.net> domain name is confusingly similar to the MICHAEL KORS mark, due to the addition of the generic term “watches,” a hyphen, and the gTLD “.net.” The Panel also notes that the space between the terms of the MICHAEL KORS mark is eliminated and the term “watches” is descriptive of Complainant’s products. The Panel determines that the changes made to the <michaelkors-watches.net> domain name do not prevent it from being confusingly similar to Complainant’s MICHAEL KORS mark under Policy ¶ 4(a)(i) and that it is confusingly similar to that mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FOSSIL trademark and the trademark MICHAEL KORS in which Complainant has rights and to use them in its domain names, merely adding the generic words “bag” and “ sale” to the former and “ watches” to the latter, thereby strengthening the confusing similarity between each of the domain names respectively and the trademark;
(b) Respondent has then decided to use the domain names to sell goods by giving the false impression that the domain names lead to official websites of Complainant and offer legitimate goods for sale when in fact such websites are not authorized and the goods promoted for sale on them are not being sold legitimately and may be counterfeit;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant also submits that Respondent is not commonly known by either of the disputed domain names, or by the FOSSIL or MICHAEL KORS marks. Complainant submits evidence indicating that the WHOIS information identifies “Zhang qianqian/zhangqianqian zhangqianqian” as the registrant. See Exhibit A. Complainant also contends that Respondent does not have authorization to use the MICHAEL KORS mark and is not an authorized distributor of Complainant’s goods and services. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), concluded that the respondent was not commonly known by the disputed domain names, as demonstrated by the WHOIS information and the complainant’s assertion that the respondent had no authorization to use the disputed domain name. The Panel determines that the evidence on record shows that Respondent is not commonly known by either the <fossilbagsale.com> or the <michaelkors-watches.net> domain names and therefore lacks rights and legitimate interests in the domain names under Policy ¶ 4(c) (ii).
(e) Complainant asserts that Respondent uses the <fossilbagsale.com> domain name to market what purports to be FOSSIL branded products by duplicating Complainant’s artwork, product descriptions and style numbers from the products listed on Complainant’s website, which Complainant alleges is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Internet users are likely ordering products thinking that they are being offered genuine FOSSIL products, when in fact they may be getting counterfeit products or not getting any products at all. The Panel finds that Respondent’s use of the <fossilbagsale.com> domain name to pass itself off as Complainant’s website in order to post counterfeit goods for sale is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c) (iii)); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
(f) Complainant argues that Respondent uses the <michaelkors-watches.net> domain name to host a website that purports to sell watches under the MICHAEL KORS brand and uses photographs and product descriptions taken directly from the official website for MICHAEL KORS products. Complainant contends that such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Pane finds that attempting to copy Complainant’s website in order to sell counterfeit versions of Complainant’s goods online is not a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). 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); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant alleges that Respondent’s use of the <fossilbagsale.com> domain name to attract Internet users by using a confusingly similar domain name to Complainant’s FOSSIL mark in order to make a profit by marketing its products is evidence of bad faith registration and use. Complainant argues in its Policy ¶ 4(a) (ii) section that Respondent attempts to sell counterfeit products under the FOSSIL mark. The Panel finds that Respondent’s unauthorized use of the <fossilbagsale.com> domain name to generate a commercial gain by confusing consumers and diverting them to its own commercial website demonstrates bad faith registration and use pursuant to Policy ¶ 4(b) (iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products).
Secondly, Complainant asserts that Respondent uses the <michaelkors-watches.net> domain name to make a profit by confusing Internet users and diverting traffic to its website demonstrates bad faith registration and use. Complainant asserts in its Policy ¶ 4(a) (ii) section that Respondent markets counterfeit versions of Complainant’s goods. The panel in H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009), concluded that the respondent’s sale of counterfeit items may create confusion as to the complainant’s affiliation with the disputed domain name and the respondent profits as a result of that confusion. The Panel determines that Respondent’s bad faith registration and use under Policy ¶ 4(b) (iv) is shown by Respondent’s attempt to attract Internet consumers to its website by using a confusingly similar domain name to sell counterfeit products in order to make a financial gain.
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the famous FOSSIL and MICHAEL KORS marks, which demonstrates Respondent’s bad faith registration of the <fossilbagsale.com> and <michaelkors-watches.net> domain names. The Panel finds that the content posted at the resolving websites associated with the <fossilbagsale.com> and <michaelkors-watches.net> domain names appears to demonstrate an awareness of Complainant’s FOSSIL and MICHAEL KORS marks on the part of Respondent and finds that Respondent had actual knowledge of Complainant’s rights in the marks prior to registering the disputed domain names. As the Panel makes such a finding, the Panel also finds that Respondent’s actual knowledge is evidence of Respondent’s bad faith registration pursuant to Policy ¶ 4(a) (iii). See 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").
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the FOSSIL and MICHAEL KORS marks and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fossilbagsale.com> and <michaelkors-watches.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 26, 2012
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