Fossil-watches.info

The timeline behind fossil-watches.info

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Fossil, Inc. v. Galina Vilyus Claim Number: FA0704000969285 PARTIES Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is Galina Vilyus (“Respondent”), 13, 30-Richa Peremogy, Velikij bereznij, Zakarpatska, reg. 89000 Ukraine. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <fossil-watches.info>, registered with Go Daddy Software, Inc. PANEL 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. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 26, 2007. On April 24, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <fossil-watches.info> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 April 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification"), setting a deadline of May 17, 2007 for Respondent to file a response to the Complaint, was delivered 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@fossil-watches.info by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On May 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding. 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: Complainant sells watches, jewelry, fashion accessories and clothing. Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the FOSSIL mark (Reg. No. 1,467,255, issued Dec. 1, 1987). Respondent is not authorized by Complainant to use the FOSSIL mark. Respondent registered the <fossil-watches.info> domain name on March 24, 2007. Respondent is using the disputed domain name to display a list of hyperlinks advertising various watches produced by Complainant and its competitors. Respondent’s <fossil-watches.info> domain name is confusingly similar to Complainant’s FOSSIL mark. Respondent does not have any rights or legitimate interests in the <fossil-watches.info> domain name. Respondent registered and uses the <fossil-watches.info> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS (1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and (2) Respondent has no rights 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. DISCUSSION 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. 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 a 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.” 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. Identical and/or Confusingly Similar Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark on Complainant. Since Complainant registered the FOSSIL mark with the USPTO in 1987, Complainant has established rights in the FOSSIL mark pursuant sufficient for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007): “Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).” See also Enter. Rent-a-Car Co. v. BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007): “The Panel finds that Complainant’s timely registration [with the USPTO] and subsequent use of the ENTERPRISE mark for over 20 years sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).” Respondent’s <fossil-watches.info> domain name contains Complainant’s FOSSIL mark in its entirety and merely adds a hyphen with the generic word “watches” and the generic top-level domain (“gTLD”) “.info.” In Allianz of America Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), a panel found that the addition of the generic term “finance,” which described a complainant’s financial services business as well as a gTLD, did not sufficiently distinguish a respondent’s disputed domain name from that complainant’s mark under Policy ¶ 4(a)(i). Likewise, in Innomed Technicians, Inc. v. DRP Services, FA 221171 (Nat. Arb. Forum Feb. 18, 2004), a panel concluded that hyphens and top-level domains are irrelevant for purposes of the Policy. Like the disputed domain name in Allianz, Respondent’s <fossil-watches.info> domain name contains Complainant’s FOSSIL mark in its entirety and merely adds the generic word “watches,” which describes Complainant’s business. Since hyphens and top-level domains are irrelevant for purposes of the Policy according to Innomed, we conclude that Respondent’s domain name is confusingly similar to Complainant’s FOSSIL mark pursuant to Policy ¶ 4(a)(i). The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges that Respondent does not have rights or legitimate interests in the <fossil-watches.info> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it nonetheless has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where a complainant asserts that a respondent lacks rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clerical-medical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent lacks rights or legitimate interests in a disputed domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such rights or legitimate interests exist). Because Respondent has not responded to the Complaint, the Panel will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). In this connection, we first observe that Complainant alleges that Respondent is not commonly known by the <fossil-watches.info> domain name. The WHOIS information identifies Respondent as “Galina Vilyus,” and Complainant contends, without objection from Respondent, that Respondent is not authorized to use the FOSSIL mark. The Panel can find no other evidence in the record indicating that Respondent is commonly known by the disputed domain name. Therefore, we conclude that Respondent is not commonly known by the <fossil-watches.info> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that, without demonstrable evidence to support the assertion that a respondent is commonly known by a disputed domain name, the assertion must be rejected). We also note that Respondent does not deny Complainant’s allegation that Respondent is using the <fossil-watches.info> domain name to display a list of hyperlinks advertising various watches produced by Complainant and its competitors. Such use does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to that complainant’s competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2004): “Respondent’s appropriation of the SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.” The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Under this head, we believe that Respondent’s <fossil-watches.info> domain name, which Respondent does not deny is confusingly similar to Complainant’s FOSSIL mark, is likely to cause confusion among customers searching for Complainant’s watches, inasmuch as Internet users may become confused as to the possible affiliation, endorsement, or sponsorship of Respondent’s website by Complainant. Respondent presumably receives click-through fees for each misdirected Internet user. Respondent is therefore attempting to benefit commercially from this likelihood of confusion. Therefore, we conclude that Respondent’s registration and use of the <fossil-watches.info> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007): “The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.” See also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of a domain name confusingly similar to a complainant’s mark to resolve to a website where services similar to that complainant’s are offered to Internet users is likely to confuse the user into believing that that complainant is the source of or is sponsoring the services offered at the site). In addition, it appears that Respondent registered the <fossil-watches.info> domain name with at least constructive knowledge of Complainant’s rights in the FOSSIL trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002). For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED. Accordingly, it is Ordered that the domain name <fossil-watches.info> be forthwith TRANSFERRED from Respondent to Complainant. Terry F. Peppard, Panelist Dated: May 29, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.