Fossil Group, Inc. v. cheng binghao
Claim Number: FA1701001712834
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is cheng binghao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <china-fossil.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2017; the Forum received payment on January 17, 2017.
On January 18, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <china-fossil.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 January 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 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@china-fossil.com. Also on January 18, 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 15, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the name and mark FOSSIL, is a maker and marketer of watches, jewelry, fashion accessories and related goods.
Complainant holds a registration for the trademark FOSSIL, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,582,547, registered February 13, 1990.
Respondent registered the domain name <china-fossil.com> on January 5, 2017.
The domain name is confusingly similar to Complainant’s FOSSIL mark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant in any way.
Respondent is not licensed by Complainant to use Complainant’s FOSSIL mark.
Respondent uses the domain name to resolve to a website nearly identical to Complainant’s legitimate website, <fossil-asia.com>, in an attempt to pass itself off as Complainant and to profit from the sale of counterfeit goods in competition with the business of Complainant.
This is not a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent’s use of the domain name creates confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name.
Respondent knew of Complainant and its rights in the FOSSIL mark when it registered the domain name.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the FOSSIL trademark by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum February 1, 2005) (concluding that a UDRP complainant had established rights in its mark under Policy ¶ 4(a)(i) by registration of the mark with the USPTO).
This is so without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (FORUM August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <china-fossil.com> domain name is confusingly similar to Complainant’s FOSSIL trademark. The domain name includes the mark in its entirety, adding only the geographic term “China,” plus a hyphen and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (FORUM May 4, 2015) (finding that because “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”).
See also Innomed Techs., Inc. v. DRP Servs., FA 221171 (FORUM February 18, 2004) (finding that the addition of hyphens and a top-level domain to the mark of another in creating a domain name is irrelevant for purposes of determining the question of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (FORUM August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (FORUM September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <china-fossil.com> domain name, that Respondent is not affiliated with Complainant in any way, and that Respondent is not licensed by Complainant to use its FOSSIL mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as, “cheng binghao,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the domain name so as to have demonstrated rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See, for example, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (FORUM July 27, 2015) (finding that a UDRP respondent was not commonly known by a contested <chevron-europe.com> domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information identified the registrant of the domain name only as “Fred Wallace”).
We next observe that Complainant asserts, without objection from Respondent, that the <china-fossil.com> domain name resolves to a website displaying Complainant’s FOSSIL mark and logo in an attempt both to pass itself off as Complainant and to profit from the sale of counterfeit goods competing with the business of Complainant. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i). See Kmart of Mich., Inc. v. Cone, FA 655014 (FORUM April 25, 2006) (The panel there finding that a respondent’s use of a domain name was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) where that respondent used the domain name to present Internet users with a website nearly identical to a UDRP complainant’s official website).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the <china-fossil.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Fossil, Inc. v. NAS, FA 92525 (FORUM February 23, 2000) (determining, under Policy ¶ 4(b)(iii), to transfer to a UDRP complainant the <fossilwatch.com> domain name, where it found that a respondent, a watch dealer not authorized to sell that complainant’s goods, had disrupted that complainant’s business). See also Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (FORUM July 10, 2015):
Use of a domain name to offer counterfeit goods does consist of bad faith under Policy¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of the <china-fossil.com> domain name, which we have found to be confusingly similar to Complainant’s FOSSIL trademark, is an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in registering and using the domain name. See Fossil Inc. v. NAS, FA 92525 (FORUM Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). See also Affliction, Inc. v. Chinasupply, FA 1223521 (FORUM Oct. 23, 2008) (finding, under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name in a respondent’s attempt to gain commercially by creating confusion as to the possibility of a UDRP complainant’s connection with a website employed to sell counterfeit products).
Finally, under this head of the Policy, it is evident from the record that Respondent knew of Complainant and its rights in the FOSSIL mark when it registered the <china-fossil.com> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (FORUM Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in a mark when it registered a confusingly similar domain name).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <china-fossil.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 16, 2017
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