Fossil Group, Inc. v. Jessyca Roseberry
Claim Number: FA1910001865310
Complainant is Fossil Group, Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Jessyca Roseberry ("Respondent"), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilvente.online>, registered with NameSilo, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2019; the Forum received payment on October 3, 2019.
On October 3, 2019, NameSilo, LLC confirmed by email to the Forum that the <fossilvente.online> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@fossilvente.online. Also on October 4, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 October 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 sells watches, jewelry, accessories, and related items online and through retail stores. Complainant has used the FOSSIL trademark in connection with this business continuously since at least as early as 1985. Complainant’s FOSSIL mark is registered in the United States, Canada, and elsewhere, and Complainant asserts that the mark has become famous as a result of longstanding use and promotional efforts.
Respondent registered the disputed domain name <fossilvente.online> through a privacy registration service in August 2019. The domain name is being used for a website that displays Complainant's mark and appears to be an official Fossil online store. The site displays images of Complainant's products, accompanied by prices that Complainant describes as "highly suspect." Complainant suggests that the actual purpose of the site is to collect credit card information from or otherwise defraud unwary consumers. Complainant states that Respondent is not commonly known by the FOSSIL mark; is not licensed to use the mark; and is neither affiliated with Complainant in any way nor an authorized vendor, supplier, or distributor of Complainant's goods.
Complainant contends on the above grounds that the disputed domain name <fossilvente.online> is confusingly similar to its FOSSIL mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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:
(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <fossilvente.online> incorporates Complainant's registered FOSSIL trademark, adding the generic term "vente" (French for "sale") and the ".online" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Minelli SAS v. Domain Administrator, See PrivacyGuardian.org / Dorota Borowska / Gretchen Aquino, D2019-0770 (WIPO May 27, 2019) (finding <millivente.online> and <minelliventes.online> confusingly similar to MINELLI); Fossil Group, Inc. v. Martin Chan, FA 1611629 (Forum Apr. 29, 2015) (finding <fossiil.com> confusingly similar to FOSSIL); Fossil, Inc. v. Zhang qianqian / zhangqianqian zhangqianqian, FA 1462058 (Forum Oct. 26, 2012) (finding <fossilbagsale.com> confusingly similar to FOSSIL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that impersonates Complainant and likely is part of a phishing or other fraudulent scheme.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain name incorporates Complainant's well-known registered mark without authorization. It is being used for a website that impersonates Complainant, very likely for fraudulent purposes. (The precise nature of these purposes is unclear; the products may be nonexistent or counterfeit, and the purpose of the website may be to collect credit card information or other personal information from Internet users rather than to sell products.) Such conduct is indicative of bad faith under the Policy. See, e.g., Minelli SAS v. Domain Administrator, See PrivacyGuardian.org / Dorota Borowska / Gretchen Aquino, supra (finding bad faith where domain names incorporating well-known marks and registered through proxy service were used to promote "heavily discounted goods," likely counterfeits). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fossilvente.online> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: November 4, 2019
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