Fossil Group, Inc. v. olivia lim
Claim Number: FA1308001514644
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is olivia lim (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilwatches.info>, registered with GoDaddy.com, LLC.
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 August 14, 2013; the National Arbitration Forum received payment on August 14, 2013.
On August 14, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fossilwatches.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2013 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@fossilwatches.info. Also on August 15, 2013, 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.
The Parties bilaterally requested a stay of the administrative proceeding on September 3, 2013. This request was granted by the Forum on September 4, 2013.
On September 13, 2013, the Forum issues a Reinstatement Order in regards to this administrative proceeding pursuant to Complainant’s request to remove the stay on the administrative proceeding.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2013, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent did not submit a formal, compliant Response. In a set of e-mails addressed to the Forum, Respondent indicated that it may be willing to allow Complainant to take the domain name. Respondent has not provided any other statements following the lifting of the stay request.
1. Complainant is a United States company whose business uses the FOSSIL mark in connection with the sale of watches, jewelry, fashion accessories, handbags, leather goods, and an array of other related goods.
2. Complainant has registered the FOSSIL mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,467,255 registered on December 1, 1987) and with Malaysia’s Intellectual Property Corporation (“MIPC”) (Reg. No. 92002742 registered January 9, 2009).
3. Respondent registered the <fossilwatches.info> domain name on January 29, 2013.
4. Respondent uses the <fossilwatches.info> domain name to send Internet users to a website that uses the FOSSIL mark to advertise unrelated coupons, as well as display advertisements for watches sold by Complainant’s competitors.
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 uses the FOSSIL mark in connection with the sale of watches, jewelry, fashion accessories, handbags, leather goods, and an array of other related goods. Complainant notes that it has registered the FOSSIL mark with the USPTO (e.g., Reg. No. 1,467,255 registered on December 1, 1987) and with Malaysia’s MIPC (Reg. No. 92002742 registered January 9, 2009). The Panel finds that proof of trademark registration in multiple jurisdictions, including the jurisdiction governing Respondent, satisfies the rights requirement of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is
identical or confusingly similar to Complainant’s FOSSIL trademark.
Complainant notes that Respondent has registered the <fossilwatches.info> domain name and Complainant claims that this domain name is confusingly similar to the FOSSIL mark because it adds a term describing Complainant’s goods, “watches,” along with the common gTLD “.info” to the FOSSIL mark. The Panel agrees that the addition of the gTLD is not relevant to this discussion. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Previous panels have found that the addition of a descriptive or generic term to a domain name, when that term merely describes the goods or services provided under a mark, ordinarily determines that there is confusing similarity between the domain name and the trademark. 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). The Panel likewise finds that the <fossilwatches.info> domain name is confusingly similar to the FOSSIL mark under Policy ¶ 4(a)(i), as the domain name is composed merely from the mark, a single descriptive term, and a gTLD.
Complainant has thus made out the second 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 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); 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 trademark and to use it in its domain name, making only the addition of a generic word, thus implying that the domain name in each case is an official domain name of Complainant and that it will lead to an official website of Complainant where Complainant’s products may be bought;
(b) Respondent has then caused the <fossilwatches.info> domain name to send Internet users to a website that uses the FOSSIL mark to advertise unrelated coupons, as well as display advertisements for watches sold by Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not known by the <fossilwatches.info> domain name, but is known through the WHOIS information as “Olivia Lim.” Complainant states that Respondent has no affiliation, sponsorship, licensing arrangement, or any other agreement that allows Respondent to use the FOSSIL mark in domain names. The Panel agrees that there is insufficient evidence in the record to make any findings under Policy ¶ 4(c)(ii). See, e.g., 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);
(e) Complainant argues that Respondent uses the <fossilwatches.info> domain name to send Internet users to a website that uses the FOSSIL mark to advertise unrelated coupons, as well as display advertisements for watches sold by Complainant’s competitors. The Panel notes that the domain name currently resolves to a website that features the FOSSIL mark in connection with the offering of coupons for diapers, cleaning wipes, and laundry detergent, along with advertisements promoting FOSSIL goods with links that in fact send Internet users to competing products on Amazon.com’s website. See Complainant’s Ex. F. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that there was nothing bona fide about the use of a disputed domain name for purposes of promoting competing and unrelated goods through hyperlinks and affiliate links. The Panel here agrees that Respondent’s use of this domain name creates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use;
(f) Complainant next alleges that Respondent uses the FOSSIL logos and other images and trademarks owned by Complainant to enhance the impression that Respondent is connected with Complainant. Complainant argues that this scheme of passing off does not provide a right or legitimate interest in the <fossilwatches.info> domain name. The Panel again notes that Respondent uses replications of Complainant’s FOSSIL mark and logos in promoting its website. See Complainant’s Ex. F. Previous panels have discredited any claim of rights or legitimate interests when the respondent appeared to be using the complainant’s mark in the domain name, and within the domain name’s resolving website, to create the impression that the respondent and the complainant were associated because this scheme made Internet users believe that the complainant was the source or origin of the goods promoted. 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). The Panel thus finds that Respondent’s attempt to pass off as Complainant illustrates a lack of Policy ¶ 4(a)(ii) rights and legitimate interests in the <fossilwatches.info> domain name.
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 name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent is seeking to attract commercial gains by creating the likelihood that Internet users will confuse Complainant as the source or origin of the content on the <fossilwatches.info> domain name. Complainant concludes that Respondent’s goal is to tempt Internet users to click through the hyperlinks to the competing watch products, or unrelated coupon offerings, promoted with the <fossilwatches.info> domain name. The Panel again notes that the domain name hosts coupons to various unrelated products, as well as descriptions of FOSSIL goods that are associated with hyperlinks to competing JOINNEW watch products. See Complainant’s Ex. F. In MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006), the panel found that the respondent’s bad faith use could be traced to Policy ¶ 4(b)(iv) because the domain name’s only function was to promote unrelated and competing goods through a misappropriation of the complainant’s trademark for the sole gain of the respondent. The Panel here likewise finds Respondent’s use to constitute Policy ¶ 4(b)(iv) bad faith.
Secondly, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the FOSSIL mark prior to registering the domain name, yet registered <fossilwatches.info> anyway. The Panel again notes that Respondent uses exact replicas of Complainant’s trademarks and logos in forming the content on the <fossilwatches.info> domain name. The Panel finds that the record here provides sufficient evidence to find Policy ¶ 4(a)(iii) bad faith registration based upon Respondent’s actual knowledge of the FOSSIL mark when registering the domain name. See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Thirdly, 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 name using the Complainant’s trademark in the manner described above and its subsequent use of the disputed domain name, Respondent registered and used it 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 <fossilwatches.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: September 20, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page