Fossil, Inc. v. TradeMark Management
Claim Number: FA1212001475433
Complainant is Fossil, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is TradeMark Management (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwfossil.com>, registered with Inames Co., Ltd. d/b/a inames.co.kr.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 11, 2012; the National Arbitration Forum received payment on December 11, 2012. The Complaint was submitted in both English and Korean.
On December 11, 2012, Inames Co., Ltd. d/b/a inames.co.kr confirmed by e-mail to the National Arbitration Forum that the <wwwfossil.com> domain name is registered with Inames Co., Ltd. d/b/a inames.co.kr and that Respondent is the current registrant of the name. Inames Co., Ltd. d/b/a inames.co.kr has verified that Respondent is bound by the Inames Co., Ltd. d/b/a inames.co.kr 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 December 20, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of January 9, 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@wwwfossil.com. Also on December 20, 2012, the Korean language 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 January 18, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a) Complainant has rights in the FOSSIL mark.
a. Complainant is a global retailer specializing in the design, marketing, and sale of products including watches, handbags, and clothes.
b. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) registrations for the FOSSIL mark (e.g., Reg. No. 1,467,255 registered Dec. 1, 1987). See Complainant’s Exhibit C.
c. Complainant is the owner of the registrations for the FOSSIL mark (e.g., Reg. No. 249,087 registered Sept. 8, 1992) with the Korean Industrial Property Office (“KIPO”). See Complainant’s Exhibit C.
b) The <wwwfossil.com> domain name is confusingly similar to the FOSSIL mark.
a. The disputed domain name incorporates the FOSSIL mark in its entirety, adding only “www,” an element of a standard URL, and the generic top-level domain (“gTLD”) “.com.”
c) Respondent has no rights or legitimate interests in the <wwwfossil.com> domain name.
a. Respondent is not commonly known by the <wwwfossil.com> domain name. Respondent is not affiliated with or licensed by Complainant. The WHOIS record identifies Respondent as TradeMark Management.
b. Respondent has never used the <wwwfossil.com> domain name in connection with a bona fide offering of goods or services. The domain name resolves to a website featuring links that promote third-party products and services, including competitors of Complainant. See Complainant’s Exhibit D.
c. Respondent is offering the disputed domain name for sale for an undisclosed price.
d. Respondent has engaged in typosquatting. Respondent chose the <wwwfossil.com> domain name because it is a predictable misspelling and mistyping of Complainant’s <www.fossil.com>.
d) Respondent registered and uses the <wwwfossil.com> domain name in bad faith.
a. Respondent is offering the disputed domain name for sale for an undisclosed price.
b. Respondent has developed a history of bad faith registrations of domain names. Respondent has had at least three prior adverse UDRP decisions against it. See Time Warner Cable Inc. v. TradeMark Mgmt., FA 1391117 (Nat. Arb. Forum June 30, 2011); see also Besiktas Jimnastik Kulübü Dernegi v. Trademark Mgmt., D2012-1291 (WIPO Aug. 29, 2012); see also Alberto-Culver Int’l, Inc. v. Trademark Mgmt., D2008-1439 (WIPO Nov. 24, 2008).
c. The <wwwfossil.com> domain name disrupts Complainant’s business. Respondent diverts Internet users from Complainant’s website to Respondent’s website.
d. Respondent used the FOSSIL mark to misleadingly divert Internet users to the <wwwfossil.com> domain name for commercial gain. Respondent’s use of a confusingly similar domain name to host a website that links visitors to Complainant’s competitors demonstrates that Respondent intended to create and association with Complainant and its products and services. Respondent merely seeks to unfairly commercially benefit from the goodwill associated with the FOSSIL mark.
e. Respondent has engaged in typosquatting. Respondent chose the <wwwfossil.com> domain name because it is a predictable misspelling and mistyping of Complainant’s <www.fossil.com>.
f. Respondent had knowledge of Complainant’s rights in the FOSSIL mark. Respondent used the FOSSIL mark in its domain name and displayed links to Complainant’s competitors on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Korean, thereby making the language of the proceedings in Korean.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant is Fossil Inc., who lists its address as Richardson, TX, USA. Complainant is a global retailer of lifestyle and accessory items. Complainant has more than 390 stores worldwide in over 90 countries and also engages in e-commerce at its official website <fossil.com>. Complainant and its predecessor have used the FOSSIL mark as early as 1985. The mark has been registered in jurisdictions throughout the world including South Korea.
Respondent is TradeMark Management who lists its address as Seoul, South Korea. Respondent’s registrar also lists its address as Seoul South Korea. The Respondent registered the <wwwfossil.com> domain name on February 1, 2011.
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 contends that it has rights in the FOSSIL mark. Complainant claims that it is a global retailer specializing in the design, marketing, and sale of products including watches, handbags, and clothes. Complainant argues that it is the owner of USPTO registrations for the FOSSIL mark (e.g., Reg. No. 1,467,255 registered Dec. 1, 1987) and the registrations for the FOSSIL mark (e.g., Reg. No. 249,087 registered Sept. 8, 1992) with the KIPO. See Complainant’s Exhibit C. The Panel finds that Complainant has rights in the FOSSIL mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant alleges that the <wwwfossil.com> domain name is confusingly similar to the FOSSIL mark. Complainant asserts that the disputed domain name incorporates the FOSSIL mark in its entirety, adding only “www,” an element of a standard URL, and the gTLD “.com.” The Panel finds that the addition of “www” to the FOSSIL mark without the period between the two fails to distinguish the mark from the <wwwfossil.com> domain name. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel also finds that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. 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). The Panel finds that the <wwwfossil.com> domain name is confusingly similar to the FOSSIL mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <wwwfossil.com> domain name. Complainant contends that Respondent is not commonly known by the <wwwfossil.com> domain name. According to Complainant, Respondent is not affiliated with or licensed by Complainant. Additionally, Complainant notes that the WHOIS record identifies Respondent as “TradeMark Management.” The Panel finds that Respondent is not commonly known by the <wwwfossil.com> domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent has never used the <wwwfossil.com> domain name in connection with a bona fide offering of goods or services. Complainant demonstrates that the domain name resolves to a website featuring links that promote third-party products and services, including competitors of Complainant. See Complainant’s Exhibit D. The Panel notes that these links appear listed in connection with such headings as “GUCCI® Watches” and “Tissot Luxury Watches.” See Complainant’s Exhibit D. The Panel finds that Respondent is using the <wwwfossil.com> domain name for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (the display of links to competitors in the industry that the complainant operates in is not a use of a disputed domain name which provides rights or legitimate interests.).
Complainant further asserts that Respondent has engaged in typosquatting. Complainant contends that Respondent chose the <wwwfossil.com> domain name because it is a predictable misspelling and mistyping of Complainant’s <www.fossil.com>. The Panel finds that Respondent has neither rights nor legitimate interests pursuant to Policy ¶ 4(a)(ii). See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2 2005) (“respondent lacks rights and legitimate interests in the <www-amazon.com> domain name because respondent's addition of the prefix "www-" to complainant's AMAZON.COM mark constitutes typosquatting.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered and uses the <wwwfossil.com> domain name in bad faith. Complainant asserts that Respondent is offering the disputed domain name for sale for an undisclosed price. The screenshot of the disputed domain name’s resolving website demonstrates that Respondent displays a message that says, “Inquire about this domain name.” See Complainant’s Exhibit D. The Panel finds that Respondent registered and is using the <wwwfossil.com> domain name in bad faith under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), (the willingness to sell a domain name is evidence of bad faith.).
Complainant asserts that Respondent has developed a history of bad faith registrations of domain names. Complainant notes that Respondent has had at least three prior adverse UDRP decisions against it. See Time Warner Cable Inc. v. TradeMark Mgmt., FA 1391117 (Nat. Arb. Forum June 30, 2011); see also Besiktas Jimnastik Kulübü Dernegi v. Trademark Mgmt., D2012-1291 (WIPO Aug. 29, 2012); see also Alberto-Culver Int’l, Inc. v. Trademark Mgmt., D2008-1439 (WIPO Nov. 24, 2008). The Panel finds that Respondent registered and is using the <wwwfossil.com> domain name in its pattern of bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant contends that the <wwwfossil.com> domain name disrupts Complainant’s business. Respondent diverts Internet users from Complainant’s website to Respondent’s website. Complainant notes that the disputed domain name resolves to a website where Complainant’s competitors are linked to. These links are listed under headings such as “European Watch Company” and “Buy Timex Weekender Watch.” See Complainant’s Exhibit D. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel held that such use is disruptive. The Panel finds that Respondent’s registration and use of the <wwwfossil.com> domain name is disruptive to Complainant’s business and thus a product of bad faith under Policy ¶ 4(b)(iii).
Complainant also asserts that Respondent has engaged in typosquatting. Complainant argues that Respondent chose the <wwwfossil.com> domain name because it is a predictable misspelling and mistyping of Complainant’s <www.fossil.com>. Panels have held that derivatives of a mark that are intended to capitalize on common misspellings and mistypings of a domain name identify an intent to typosquat a mark. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). The Panel finds that Respondent’s typosquatting is further evidence that Respondent registered and uses the <wwwfossil.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwfossil.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: January 31, 2013
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