Fossil Group, Inc. v. Gretchen Aquino
Claim Number: FA1910001866738
Complainant is Fossil Group, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Gretchen Aquino (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fossilwatch.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 14, 2019; the Forum received payment on October 14, 2019.
On October 15, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <fossilwatch.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 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2019 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@fossilwatch.online. Also on October 15, 2019, 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 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 relies on its rights in the FOSSIL trademark acquired by its ownership of its portfolio of trademark registrations described below and continuous use of the mark since 1985. Over that time, Complainant has built its goodwill and reputation in the FOSSIL mark through promotional activities and sales. Complainant now sells its products in specialty retail stores in more than 90 countries and online through Complainant’s official website.
Complainant submits that the disputed domain name is confusingly similar to its FOSSIL trademark, arguing that the disputed domain name incorporates the FOSSIL mark in its entirety, adding only the term generic or descriptive term “watch” along with the gTLD <.online> extension. Complainant argues that the addition of the descriptive term “watch” to Complainant’s well-known FOSSIL trademark does not avoid confusing similarity. See Fossil, Inc. v. Olivia lim, FA1514644 (Forum Sept. 20, 2013) (finding <fossilwatches.info> confusing similar to the FOSSIL mark and finding in particular that the addition of the word “watches” describes Complainant’s goods); Fossil, Inc. v. Galina Vilyus, FA 969285 (Forum May 29, 2007) (finding <fossil-watches.info> confusingly similar to the FOSSIL mark, especially where the term “watches” describes Complainant’s business).
Complainant further submits the gTLD <.online> extension does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). In this regard, Complainant refers to the decision in Fossil, Inc. v. Amorvine Global Ltd., FA954070 (Forum May 17, 2007) and Abbott Laboratories v. Whois Service c/o Belize Domain WHOIS Service, FA 1254682 (Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by Complainant’s FOSSIL mark; that Respondent’s identity is redacted in the Registrar’s WHOIS but according to the verification information received from the Registrar, Respondent is known as “Gretchen Aquino”. Complainant adds that Respondent is not affiliated with Complainant in any way; that Respondent is not licensed by Complainant to use Complainant’s FOSSIL mark; that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services; that Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use; that Respondent is using the disputed domain name, that is confusingly similar to Complainant’s FOSSIL trademark, to attract computer users to Respondent’s own site and such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name.
Complainant submits that the disputed domain name was registered an is being used in bad faith arguing that at the time that Respondent registered the disputed domain name, Complainant’s FOSSIL mark was unquestionably famous and familiar to Internet users and that the registrant intentionally adopted the name identical to the FOSSIL mark in order to create an association with Complainant and its products. Complainant argues that Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its famous mark is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
Complainant also argues that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s FOSSIL marks as to the source, sponsorship, affiliation, or endorsement of Respondent with Complainant.
Complainant further submits that the disputed domain name resolves to a website that appears to be an official online store of Complainant, duplicating the FOSSIL script on the site. Complainant complains that Respondent’s website advertises what appears to be Complainant’s’ actual branded goods, however, the prices listed are highly suspect and there is a legitimate concern that an unwary consumer may enter their credit card information and be the victim of a phishing scheme.
Complainant submits that by using the FOSSIL mark and images of what appear to be genuine FOSSIL branded watches, Respondent’s web site gives the false impression of an affiliation with Complainant and its famous mark, making it clear that Respondent has sought to benefit commercially from Complainant’s well-established goodwill.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of an extensive portfolio of registrations for the trademark FOSSIL in numerous jurisdictions across the world, including for example Canada registered trademark FOSSIL, registration number 359,296, registered on August 11, 1989 for “watches” in class 14.
Complainant has an established Internet presence and its ecommerce website at www.fossil.com was established in November 1996. Complainant’s Internet domain name registration for <fossil.com>, which was registered with Network Solutions on June 3, 1995.
The disputed domain name was registered on October 12, 2019 and was registered using a privacy service.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs and the registration details received form the Registrar in response to the Center’s verification request.
The disputed domain name resolves to a website with content, primarily in the German language, which offers goods including watches and bags bearing the FOSSIL trademark.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested evidence of its rights in the FOSSIL trademark acquired by its ownership of the large portfolio of the trademark registrations described above and significant, expanding use of the mark over more than 30 years. Over that period, Complainant has established an international goodwill and reputation in the FOSSIL mark with sales of its products in specialty retail stores in more than 90 countries and online through Complainant’s official website.
The disputed domain name is composed of the FOSSIL mark in its entirety together with the generic or descriptive term “watch” and the gTLD <.online> extension. Complainant’s FOSSIL mark is the initial and only distinctive element of the disputed domain name. The addition of the descriptive term “watch” does not avoid confusing similarity. In the circumstances of this present Complaint, the gTLD <.online> extension may be ignored for the purposes of comparison.
This Panel finds that on the balance of probabilities, the disputed domain name is confusingly similar to the FOSSIL trademark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name or Complainant’s FOSSIL mark; that according to the verification information received from the Registrar, Respondent is known as “Gretchen Aquino”; that Respondent is not affiliated with Complainant in any way; that Respondent is not licensed by Complainant to use Complainant’s FOSSIL mark; that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services; that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose; that Respondent’s use of the disputed domain name, that is confusingly similar to Complainant’s FOSSIL trademark, is intended to attract Internet users to Respondent’s website and as such is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Complainant having made out a prima facie case, the burden of production shifts to Respondent to establish that she has rights or legitimate interests. Respondent has failed to discharge the burden of production.
This Panel finds therefore on the balance of probabilities that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel finds that it is improbable that the registrant of the disputed domain name was unaware of Complainant, its FOSSIL mark and its reputation when the disputed domain name was chosen, created and registered. Complainant at that time had an international Internet presence and international reputation in the sale of watches. In the circumstances, this Panel finds that the disputed domain name was intentionally created as a combination of Complainant’s trademark and the word “watches” which is among the goods sold by Complainant and was registered to take predatory advantage of Complainant’s reputation and goodwill. In making this finding this Panel is conscious that the disputed domain name has been used as the address of a website intended to divert, lure and mislead Internet users by creating confusion as to the origin or source of the goods offered for sale on the website.
The content of Respondent’s website creates the misleading impression that it has an association with Complainant. On the balance of probabilities this is not simply a website dedicated to the re-sale of Complainant’s products. The website purports to create the impression that it is an official online store of Complainant, duplicating the FOSSIL script on the site. While the website purports to offer Complainant’s’ actual branded goods, Complainant’s uncontested evidence is that the listed prices for goods are highly suspect. Complainant has alleged that there is a legitimate concern that an unwary consumer may enter their credit card information and be the victim of a phishing scheme. This allegation has not been challenged or addressed by Respondent who has not filed any Response or provided any explanation of the low prices offered.
In the circumstances, this Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith. Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fossilwatch.online> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 7, 2019
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