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Generic Top Level Domain Name (gTLD) Decisions |
Fossil, Inc. v. credoNIC.com / Domain For
Sale c/o Domain Administrator
Claim
Number: FA0411000360588
Complainant is Fossil, Inc. (“Complainant”), represented
by Deborah L. Lively, of Thompson & Knight, LLP, 1700 Pacific Avenue, Suite 3300,
Dallas, TX 75201. Respondent is credoNIC.com
/ Domain For Sale c/o Domain Administrator (“Respondent”), Post Office Box 1991, Hallandale, FL 33008.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fossilpda.com>, registered with Enom,
Inc..
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
2, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 3, 2004.
On
November 3, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <fossilpda.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent
is bound by the Enom, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties
in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
November 5, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 29, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing
contacts, and to postmaster@fossilpda.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
December 8, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Louis E.
Condon 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." 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 makes the following assertions:
1. Respondent’s <fossilpda.com>
domain name is confusingly similar to Complainant’s FOSSIL and WRIST PDA marks.
2. Respondent does not have any rights or
legitimate interests in the <fossilpda.com> domain name.
3. Respondent registered and used the <fossilpda.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant
is a producer of watches, jewelry, fashion accessories, and clothing and an owner
of retail stores featuring such products
and related goods and services.
Complainant holds registrations for the FOSSIL mark and for the WRIST PDA mark
with the U.S. Patent
and Trademark Office, including Reg. Nos. 1,467,255 for
FOSSIL and 2,862,033 for WRIST PDA (registered on December 1, 1987 and July
13,
2004, respectively). Complainant uses its marks in connection with, among other
things, watches, personal digital assistants
(“PDAs”), and wristwatches capable
of exchanging data with PDAs or personal computers. The generic term “PDA” is
descriptive of products
that Complainant sells. Complainant also operates a
website at the <fossil.com> domain name.
Respondent
registered the <fossilpda.com> domain name on September 11, 2004.
The domain name resolves to a pornographic website. The website also contains a
banner advertisement
offering the disputed domain name registration for sale.
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."
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.
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.
Complainant has
established that it has rights in the FOSSIL and WRIST PDA marks through
registration with the United States Patent
and Trademark Office and through the
use of the marks in commerce. See Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently
distinctive and have acquired
secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence of validity,
which creates a
rebuttable presumption that the mark is inherently distinctive. Respondent has
the burden of refuting this assumption).
Respondent’s
<fossilpda.com> domain name is confusingly similar to
Complainant’s FOSSIL and WRIST PDA marks. Respondent combines Complainant’s
FOSSIL mark
with the “PDA” portion of Complainant’s WRIST PDA mark to form the
disputed domain name. It is well established that combining trademarks
in a
domain name results in a name that is confusingly similar to each of the
combined marks. See Nintendo of
Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where Respondent combined Complainant’s POKEMON and PIKACHU marks
to
form the <pokemonpikachu.com> domain name); see also Starwood Hotels
& Resorts Worldwide, Inc. v. Hotel Partners, FA 103368 (Nat. Arb. Forum
Feb. 18, 2002) (finding confusing similarity where Respondent combined
Complainant’s SHERATON and FOUR
POINTS marks to form the
<sheratonfourpoints.com> domain name).
Furthermore,
Respondent’s <fossilpda.com> domain name is confusingly similar to
Complainant’s FOSSIL mark because Respondent added the FOSSIL mark as a prefix
to the generic
term “pda,” which is descriptive of products that Complainant
offers. The only other difference between the disputed domain name
and
Complainant’s FOSSIL mark is the “.com” generic top-level domain. As a required
element of all domain names, a top-level domain
does not distinguish a domain
name from a trademark. Therefore, the disputed domain name is not sufficiently
distinguishable from
Complainant’s FOSSIL mark under Policy ¶ 4(a)(i). See
Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(“[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from
the overall impression of the dominant part of the name in each
case, namely the trademark SONY”); see also Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s
domain name combines Complainant’s mark with
a generic term that has an obvious
relationship to Complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the
descriptive words "fashion" or "cosmetics"
after the
trademark were confusingly similar to the trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant is
able to establish a prima facie case by showing that Respondent does not
qualify for the three “safe harbors” provided
under Policy ¶¶ 4(c)(i)-(iii).
Such a showing shifts Complainant’s burden to Respondent, who must come forward
with evidence rebutting
Complainant’s allegations in order to prevail on this
element. In this case, Complainant has made a prima facie showing that
Respondent
does not have any rights or legitimate interests in the <fossilpda.com>
domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO May 14, 2001) (“[p]roving that the Respondent has
no rights or legitimate interests in respect of the [d]omain
[n]ame requires
the Complainant to prove a negative. For the purposes of this sub paragraph,
however, it is sufficient for the Complainant
to show a prima facie case and
the burden of proof is then shifted on to the shoulders of Respondent. In those
circumstances, the
common approach is for [R]espondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question”);
see also G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that
where Complainant has asserted that Respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on Respondent to come
forward with concrete evidence rebutting this assertion
because this
information is “uniquely within the knowledge and control of the respondent”).
Since
Complainant has made a prima facie showing that Respondent does not have any
rights or legitimate interests in the <fossilpda.com> domain name,
the burden is shifted to Respondent to demonstrate that it has rights or
legitimate interests in the disputed domain
name. In this proceeding,
Respondent has not submitted a Response. Thus, Respondent has failed to present
any circumstances under
which it could substantiate rights or legitimate
interests in the <fossilpda.com> domain name. Furthermore, because
Respondent has failed to submit a Response in this proceeding, the Panel may
accept as true all
reasonable allegations submitted by Complainant in the
Complaint. See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because Respondent
never
submitted a response or provided the Panel with evidence to suggest otherwise);
see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a Response the Panel is
free to make inferences from
the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Respondent is
using the <fossilpda.com> domain name to direct Internet users to
a commercial pornographic website. Respondent’s use of a domain name that is
confusingly
similar to Complainant’s FOSSIL mark dilutes Complainant’s mark by
diverting Internet users to a website unrelated to that mark and
therefore 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). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's
website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate
interests in the famous MSNBC mark where Respondent attempted to
profit using
Complainant’s mark by redirecting Internet traffic to its own website); see
also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20,
2002) (finding that because the VIAGRA mark was clearly well-known at the time
of Respondent’s registration
of the domain name it can be inferred that
Respondent is attempting to capitalize on the confusion created by the domain
name’s similarity
to the mark).
Moreover, the
website to which the <fossilpda.com> domain name directs users
also purports to offer Respondent’s domain name registration for sale.
Respondent’s attempt to resell
a domain name confusingly similar to
Complainant’s mark does not constitute a bona fide offering of goods or
services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See J.
Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum
Sept. 7, 2000) (finding rights or legitimate interests do not exist when one
has made no use of the websites
that are located at the domain names at issue,
other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name
with the
intention of selling its rights).
No evidence in
the record suggests that Respondent is commonly known by the <fossilpda.com>
domain name. Thus, Respondent has not established rights or legitimate
interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known
by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
domain name diverts Internet users wishing to search under Complainant’s
well-known mark to a commercial pornographic
website, which results in Internet
user confusion. Respondent’s practice of diversion, motivated by commercial
gain, through the
use of a confusingly similar domain name evidences bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc.
v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (“[w]hile an intent to
confuse consumers is not required for a finding of trademark infringement,
intent to deceive
is strong evidence of a likelihood of confusion”); see
also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with Complainant’s
well-known marks,
thus creating a likelihood of confusion strictly for commercial gain).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to
admitting the truth of
complainant’s assertion in this regard”).
The website to
which Respondent directs website visitors states that the <fossilpda.com>
domain name registration is for sale. The price Respondent is asking
undoubtedly exceeds its out-of-pocket expenses for registering
the domain name.
In light of the Panel’s reasonable inference that Respondent registered the
disputed domain name with full knowledge
of Complainant’s rights in the FOSSIL
mark, the Panel concludes that Respondent deliberately registered the <fossilpda.com>
domain name so that it could ultimately resell the domain name registration to
Complainant. These facts support a finding that
Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Nat’l Press
Club v. High Traffic Domains inc, FA 154113 (Nat. Arb. Forum June 2, 2003)
(finding bad faith where respondent redirected Internet users to a website
purporting to
sell the disputed domain name); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(“general offers to sell the domain name, even if no certain price is demanded,
are evidence
of bad faith”).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known FOSSIL mark and adds
a portion of Complainant’s WRIST
PDA mark, suggests that Respondent knew of Complainant’s rights in the FOSSIL
and WRIST PDA marks.
Thus, the Panel finds that Respondent chose the <fossilpda.com>
domain name based on the distinctive and well-known qualities of Complainant’s
marks, which evidences bad faith registration and
use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (“the domain
names are so obviously connected with the Complainants that the use or
registration
by anyone other than Complainants suggests ‘opportunistic bad
faith’”); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous
mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the
domain
names); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct.
24, 2002) (determining that Policy paragraph 4(b) sets forth certain
circumstances, without limitation,
that shall be evidence of registration and
use of a domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly
known mark at the time of registration).
Finally, the mere
fact that the disputed domain name, which is confusingly similar to
Complainant’s marks, resolves to a pornographic
website is evidence of bad
faith registration and use. The Panel finds that Respondent’s redirection of
unsuspecting Internet users
searching for Complainant’s marks to a commercial
pornographic website is bad faith registration and use pursuant to Policy ¶
4(a)(iii).
See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO
March 4, 2003) ( “whatever the motivation of Respondent, the diversion of the
domain name to a pornographic site
is itself certainly consistent with the
finding that the Domain Name was registered and is being used in bad faith”); see
also Wells Fargo & Co. v. Party Night Inc. and Peter Carrington, FA
144647 (Nat. Arb. Forum March 18, 2003) (finding that Respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <fossilpda.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 22, 2004
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