Omega SA v. Domain Administrator
Claim Number: FA1311001528944
Complainant is Omega SA (“Complainant”), represented by Govinda M. Davis of COLLEN IP, Intellectual Property Law, P.C., New York, USA. Respondent is Domain Administrator (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <omegaswitzerland.com>, registered with Domain.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2013; the National Arbitration Forum received payment on November 7, 2013.
On November 8, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <omegaswitzerland.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 November 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@omegaswitzerland.com. Also on November 8, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <omegaswitzerland.com> domain name, the domain name at issue, is confusingly similar to Complainant’s OMEGA mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant filed an Additional Submission detailing Respondent's activities including the use of a web page strikingly similar to that used by Complainant and Respondent's listing of its contact information as that of Complainant's parent corporation.
Complainant uses the OMEGA mark in connection with the sale of timekeeping instruments and other watch-related goods and services. Complainant’s business under the OMEGA mark occurs predominately through the sale of OMEGA goods through third-party licensee-retailers and representatives. Notably, Complainant does not sell its OMEGA goods on the Internet. Complainant has long held trademark registrations to the OMEGA mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 25,036 registered on July 24, 1894). Complainant has also registered the OMEGA mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g. Reg. No. 8,148,892 registered on June 19, 2006).
Respondent’s <omegaswitzerland.com> domain name merely affixes the geographic descriptor “switzerland” to Complainant’s OMEGA mark. The term “switzerland” has an obvious relationship to the OMEGA mark, as Complainant is based out of Switzerland. The addition of the generic top-level domain (“gTLD”) “.com” is not relevant and should be ignored for purposes of this proceeding.
The WHOIS results for the <omegaswitzerland.com> domain name indicate that Respondent is “Domain Admin.” No other name attributable to Respondent illustrates a similarity with the <omegaswitzerland.com> domain name. Respondent uses the <omegaswitzerland.com> domain name to promote and sell counterfeit watches. Respondent has used the <omegaswitzerland.com> domain name to host similar content to other domain names that Respondent has lost through the UDRP process. Specifically, Respondent was ordered to transfer the <omegawatchstore.com>, <omegawatch.me>, and <omegawatch.us> domain names following independent proceedings through the National Arbitration Forum and the World Intellectual Property Organization. Respondent’s sale of counterfeit OMEGA watches through the <omegaswitzerland.com> domain name’s website impermissibly disrupts Complainant’s legitimate OMEGA business. Respondent enjoys the profits reaped from the likelihood that Internet users will be confused into believing that the counterfeit OMEGA watches sold through the <omegaswitzerland.com> domain name’s website are in fact licensed, authorized, or endorsed by Complainant. Respondent accomplishes this likelihood of confusion by employing web design techniques and substantive content that mimics and/or has been directly copied from Complainant’s own legitimate websites.
The <omegaswitzerland.com> domain name was registered on November 8, 2013.
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 uses the OMEGA mark in connection with the sale of timekeeping instruments and other watch-related goods and services. Complainant’s business under the OMEGA mark occurs predominately through the sale of the goods through third-party licensee-retailers and representatives. Complainant does not sell its OMEGA goods on the Internet. Further, Complainant has long held trademark registrations for the OMEGA mark with the USPTO (e.g. Reg. No. 25,036 registered on July 24, 1894). Complainant has also registered the OMEGA mark with OHIM (e.g. Reg. No. 8,148,892 registered on June 19, 2006). Evidence of USPTO and OHIM registration serves as satisfactory proof of Policy ¶ 4(a)(i) rights in the OMEGA mark for the purposes of this proceeding. 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).”).
Respondent’s <omegaswitzerland.com> domain name merely adds the geographic descriptor “switzerland” to Complainant’s OMEGA mark. The term “switzerland” has an obvious relationship to the OMEGA mark, as Complainant is based out of Switzerland. The addition of the gTLD “.com” is not relevant and should be ignored for the purposes of this proceeding since gTLDs are of no concern in a Policy ¶ 4(a)(i) confusing similarity analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The addition of the term “switzerland” is not enough to distinguish this domain name, as the OMEGA portion of the domain name remains the dominant and prime element of the domain name, and the term “switzerland” confusingly suggests that the domain name pertains to a Swiss-based segment of the OMEGA business. See, e.g., VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark). Therefore the <omegaswitzerland.com> domain name is confusingly similar to the OMEGA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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 WHOIS results for the <omegaswitzerland.com> domain name indicate that Respondent is “Domain Admin.” No other name attributable to Respondent illustrates a similarity with the <omegaswitzerland.com> domain name. The WHOIS information provided illustrates that Respondent elected to list only “Administrator, Domain” as the registrant of record for the <omegaswitzerland.com> domain name. In the absence of any other information relevant to Respondent’s actual identity, there is no basis for finding that Respondent is known by the <omegaswitzerland.com> domain name pursuant to Policy ¶ 4(c)(ii). See, e.g., Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <omegaswitzerland.com> domain name to promote and sell counterfeit watches. The domain name resolves to a website wherein watches are sold under the OMEGA mark with a “list price” that is strike-out and replaced with a lower, “our price.” In Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007), the panel could find nothing bona fide about the use of a website for purposes of a commercial endeavor to promote and sell counterfeit merchandise. The Panel here finds that Respondent’s unauthorized counterfeit resale of OMEGA watches evidences neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has used the <omegaswitzerland.com> domain name to host similar infringing content on websites associated with other domain names that Respondent has lost through the UDRP process. Respondent was ordered to transfer the <omegawatchstore.com>, <omegawatch.me>, and <omegawatch.us> domain names following independent proceedings through the National Arbitration Forum and the World Intellectual Property Organization. The decisions include Omega SA v. Domain Admin, FA 1302921 (Nat. Arb. Forum Feb. 24, 2010), Omega SA v. Domain Admin, D2011-0001 (WIPO March 3, 2011) and Omega SA v. Domain Admin No. FA1437016 (Nat. Arb. Forum May 3, 2012). The Panel here notes that “Domain Admin” is obviously a placeholder and, as such, it is possible that the true Respondent in all of these cases is not a singular entity. Nonetheless, the Panel believes that Respondent here is in fact the same entity as the “Domain Admin” referenced in the prior cases supplied by Complainant. Accordingly, the Panel finds Policy ¶ 4(b)(ii) bad faith as Respondent has engaged in a pattern of bad faith use and registration. See, e.g., 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).
Respondent’s sale of counterfeit OMEGA watches through the <omegaswitzerland.com> domain name’s website impermissibly disrupts Complainant’s legitimate OMEGA business. The domain name is being used to promote watches sold under the OMEGA mark via a website that uses the OMEGA mark in its marketing content and throughout the display pages. The unauthorized use of the OMEGA mark to sell competing and counterfeit goods is sufficient evidence of Respondent’s Policy ¶ 4(b)(iii) bad faith disruption of Complainant’s business. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products).
Respondent enjoys the profits reaped from the likelihood that Internet users will be confused into believing that the counterfeit OMEGA watches sold through the <omegaswitzerland.com> domain name’s website are in fact licensed, authorized, or endorsed by Complainant. Respondent accomplishes this likelihood of confusion by employing web design techniques and substantive content that mimics and/or has been directly copied from Complainant’s own legitimate websites. In the case of Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008), the panel found a likelihood of confusion motivated by respondent’s attempt to produce a commercial gain when the respondent used the confusingly similar domain name to promote and sell competing goods. The Panel finds that Respondent’s resale of competing counterfeits of OMEGA brand watches is evidence of Policy ¶ 4(b)(iv) bad faith through the creation of a likelihood of Internet user confusion for Respondent’s own commercial gain.
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <omegaswitzerland.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 6, 2013
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