Fossil Group, Inc. v. song qiuxiang
Claim Number: FA1610001699117
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is song qiuxiang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossil-outlets.com> (‘the Domain Name’) registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2016; the Forum received payment on October 20, 2016.
On October 22, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <fossil-outlets.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 October 24, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 14, 2016 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-outlets.com. Also on October 24, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 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 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’s contentions can be summarized as follows:
Complainant is the owner of numerous registrations for FOSSIL for, inter alia, watches throughout the world including China where Respondent appears to reside.
The FOSSIL mark was first used by Complainant (under its previous name Overseas Products International Inc.) in commerce at least as early as 1985 and has been in continuous use including in China since then. Respondent has seven retail outlets in China. It has its official web site at www.fossil.com.
The Domain Name was registered on September 1, 2016. It is confusingly similar to Complainant’s famous FOSSIL mark. It incorporates the FOSSIL trade mark in its entirety adding only the descriptive word ‘outlets’, a hyphen and the gTLD .com. These elements are insufficient to negate the confusing similarity.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by Complainant’s FOSSIL mark or affiliated with or licensed by Complainant.
The Domain Name goes to a site prominently displaying the FOSSIL trade mark and appears to be an official site using images of Complainant and offering products that resemble genuine products of Complainant. This is not use in relation to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name. It is not clear if the products depicted on the site are genuine or counterfeit, however the prominent use of the FOSSIL mark and the branded products will suggest to customers that the site is that of Complainant or associated with Complainant when it is not.
The content of the web site attached to the Domain Name shows that Respondent is familiar with Complainant’s trade mark and intentionally adopted the Domain Name to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant’s FOSSIL mark to imply Respondent is Complainant or is affiliated or endorsed by Complainant. Registration of the Domain Name with knowledge of Complainant’s rights in its famous mark is bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Fossil is the owner of numerous registrations for FOSSIL for, inter alia, watches and handbags throughout the world including China where Respondent appears to reside with first use in commerce recorded in the registration in the USA as 1985.
The Domain Name is attached to a web site using Complainant’s FOSSIL trade mark prominently which sells watches and handbags and resembles the official site of Complainant.
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(f), 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 (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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's FOSSIL mark (which is registered in USA and China for handbags and watches and has been used since 1985), the generic term ‘outlets’, a hyphen and the gTLD .com.
Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by Complainant). The Panel agrees that the addition of the generic term ‘outlets’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact it may add to confusion as Complainant has outlets in the country where Respondent is based.
A hyphen is silent and is typically ignored when confusing similarity is being assessed. See Pirelli & C SPA v Tabriz, FA 921798 (Forum Apr 12, 2007)(finding that the addition of a hyphen does not differentiate a domain name from a mark under Policy 4(a)(i).)
The gTLD .com does not serve to distinguish the Domain Name from the FOSSIL mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorised the use of its mark. Respondent uses Complainant’s famous name and logo. Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that Complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that the site is set up for commercial benefit to compete with Complainant using the latter's intellectual property rights. The web site attached to the Domain Name uses Complainant's word mark FOSSIL and logo mark in a prominent fashion. Respondent is using the site in competition with those of Complainant. It does not make it clear that there is no commercial connection with Complainant. The Panel finds this use is confusing and constitutes passing off. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc. v Benjamin FA 944242 (Nat. Arb. Forum May 11, 2007) finding that Respondent's use of a confusingly similar domain name to advertise real estate services which competed with Complainant's business did not constitute a bona fide use of goods and services.) See also Kmart of Mich, Inc. v Cone, FA 655014 (Forum April 25, 2006) (The panel found that the respondent’s attempt to pass itself off as a complainant was 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) when the respondent used the disputed domain name to present users with a web site that was nearly identical to the complainant’s web site.)
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Complainant also alleges that Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with Complainant in a confusing and disruptive manner.
In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it offers goods under a Domain Name containing Complainant’s FOSSIL mark and Respondent’s web site resembles the official sister of Complainant without any explanation. The use of Complainant's FOSSIL word and logo mark on Respondent's web site shows that Respondent is aware of Complainant.
Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. (See Asbury Auto Group Inc. v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). See also AM. Online, Inc. v Miles, FA 105890 (Forum May 31, 2002) (Where use of a disputed domain name for a site imitating an official site was found to be passing off).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii).
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-outlets.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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