Fossil Group, Inc. v. Marvin Lawson
Claim Number: FA1701001711942
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Marvin Lawson (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossil-china.com>, registered with Domain.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 11, 2017; the Forum received payment January 11, 2017.
On January 12, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <fossil-china.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC verified that Respondent is bound by the Domain.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2017, 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-china.com. Also on January 12, 2017, 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 February 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant is a global retailer of watches, jewelry, fashion accessories, and other related goods, with retail stores in some ninety countries. Complainant uses the FOSSIL mark in conjunction with its business practices. Complainant registered the FOSSIL mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,467,255, registered Dec. 1, 1987). Complainant also registered the FOSSIL mark with the China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 633589, registered Mar. 10, 1993). Furthermore, Complainant holds multiple mark registrations in Asia, South America, Australia, Canada, and Europe. See Compl., at Attached Ex. B. Respondent’s <fossil-china.com> is confusingly similar to Complainant’s FOSSIL mark because it uses the mark in its entirety, adding the geographical term “china,” a hyphen, and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights to or legitimate interests in <fossil-china.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the FOSSIL mark in any way, and Respondent is not an affiliate of Complainant. Respondent has not made a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain. Respondent’s <fossil-china.com> resolves to a website containing adult-oriented material presumably for Respondent’s financial gain. See Compl., at Attached Ex. G.
Respondent registered and is using <fossil-china.com> in bad faith. The disputed domain contains adult-oriented content unrelated to Complainant’s business. See Compl., at Attached Ex. G. Additionally, <fossil-china.com> contains malware assumed to infect users’ devices to gain access to users’ personal and financial information, further evincing bad faith usage. Id. Respondent registered <fossil-china.com> with actual knowledge of Complainant and its rights to the FOSSIL mark.
Respondent did not submit a response. The Panel notes that Respondent registered <fossil-china.com> November 23, 2016.
Complainant established rights to and legitimate interests in the disputed domain name and contains in its entirety Complainant’s protected mark.
Respondent has no such rights or legitimate interests in the disputed domain name.
Respondent registered a disputed domain name that is confusingly similar to
Complainant’s protected mark.
Respondent registered and used the disputed domain name containing Complainant’s protected mark in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 to or Confusingly Similar:
Complainant is a global retailer of watches, jewelry, fashion accessories, and other related goods, with retail stores in some ninety countries. Complainant uses the FOSSIL mark in conjunction with its business practices. Complainant registered the FOSSIL mark with the USPTO (e.g. Reg. No. 1,467,255, registered Dec. 1, 1987). See Compl., at Attached Ex. B. Complainant also registered the FOSSIL mark with SAIC (e.g., Reg. No. 633589, registered Mar. 10, 1993). Furthermore, Complainant holds multiple mark registrations in Asia, South America, Australia, Canada, and Europe. See Id. The general consensus among panels is that mark registration with the USPTO and other government trademark agencies is sufficient to show rights in a mark. See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant’s multiple mark registrations are sufficient to show rights in the FOSSIL mark.
Complainant maintains that Respondent’s <fossil-china.com> is confusingly similar to Complainant’s FOSSIL mark because it uses the mark in its entirety, adding the geographical term “china,” a hyphen, and the “.com” gTLD. “[I]t is well known that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.” Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004). Moreover, Panels have found “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark" and “[t]he 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.” Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000);Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). In the instant case, the Panel finds that Respondent’s <fossil-china.com> is confusingly similar to Complainant’s FOSSIL mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant asserts that Respondent does not have rights or legitimate interests in <fossil-china.com>. To support its argument, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Marvin Lawson.” See Compl., at Attached Ex. A. “Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent . . . is not commonly known by the name [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003). Given the lack of evidence to the contrary, the Panel agrees and finds that Respondent is not commonly known by <fossil-china.com>.
Moreover, Complainant contends that it has not authorized or licensed Respondent to use the FOSSIL mark in any way and that Respondent is not an affiliate of Complainant. Complainant maintains that Respondent has not made a bona fide offering of goods and services and has not made a legitimate noncommercial or fair use of the domain. Complainant demonstrates that Respondent’s <fossil-china.com> resolves to a website containing adult-oriented material presumably for Respondent’s financial gain. See Compl., at Attached Ex. G. Panels have held that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent.” Paws, Inc. v. Zuccarini, FA 125368 (Forum Nov. 15, 2002). “Consequently, [Panels have found] that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).” Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014). Therefore, this Panel finds that Respondent does not have rights or legitimate interests in <fossil-china.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent registered and is using <fossil-china.com> in bad faith. The Panel notes that, Respondent’s <fossil-china.com> resolves to a website containing adult-oriented images and videos. See Compl., at Attached Ex. G. The disputed domain attracts Internet users to adult-oriented content unrelated to Complainant’s business. Id. “[I]t is now well known that [adult-oriented material providers] rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques.” Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002). Generally, panels find bad faith registration when disputed domain names resolve to websites containing adult-oriented content. See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent utilized a domain name confusingly similar to the complainant’s mark and used a confusingly similar adult-oriented depiction of the complainant’s registered trademark on its website to cause confusion as to the source or affiliation of the site). This Panel finds that Respondent demonstrated bad faith registration and use under Policy ¶ 4(b)(iv).
Additionally, <fossil-china.com> contains malware assumed to infect users’ devices to gain access to users’ personal and financial information, further evincing bad faith usage. See Compl., at Attached Ex. G. “Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).” Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015). See also Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org, FA 1357512 (Forum Dec. 17, 2010) (finding that a domain name attracting Internet users to a resolving website that attempts to download malicious software onto their computers to steal personal information “indicates bad faith registration and use according to Policy ¶ 4(a)(iii)”). This Panel finds that Respondent registered and is using <fossil-china.com> in bad faith under the Policy.
Finally, Complainant claims Respondent registered <fossil-china.com> with actual knowledge of Complainant and its rights to the FOSSIL mark. Due to the fame and long-standing use of the FOSSIL mark, Complainant contents that it is inconceivable that Respondent registered the disputed domain name without actual notice of Complainant and its rights to the FOSSIL mark. “Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, [Panels have found] that, due to the fame of Complainant’s mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).” Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012). This Panel agrees in these circumstances and finds that Respondent knew of Complainant and its rights to the FOSSIL mark when registering <fossil-china.com>.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(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-china.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: February 24, 2017
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