Fosil.net

The timeline behind fosil.net

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. Constramat Claim Number: FA0802001153564 PARTIES Complainant is Fossil, Inc. (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA. Respondent is Constramat (“Respondent”), Spain. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <fosil.net>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra J. Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 26, 2008. On February 26, 2008, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <fosil.net> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 18, 2008 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@fosil.net by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 25, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <fosil.net> domain name is confusingly similar to Complainant’s FOSSIL mark. 2. Respondent does not have any rights or legitimate interests in the <fosil.net> domain name. 3. Respondent registered and used the <fosil.net> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant sells watches, jewelry, fashion accessories and clothing through department store chains, specialty retail stores, and its own branded stores. Complainant markets its products using the FOSSIL mark, which it registered with the United States Patent and Trademark Office (“USPTO”) on December 1, 1987 (Reg. No. 1,467,255) and with the Oficina Española de Patentas y Marcas (Spanish Patent and Trademark Office) on May 6, 1991 (Reg. No. 1,307, 953). Respondent registered the <fosil.net> domain name on December 16, 2001. The pages that are viewed when <fosil.net> is visited are identical to pages hosted and maintained by Complainant at <fossil.com>. In at least two previous cases, Respondent was ordered to transfer the domain names in dispute to the respective complainants. See Banco Zaragozano S.A. v. Constramat, D2004-0044 (WIPO Mar. 15, 2004); see also Caixa D’Estalvis Laietana v. Costramat, D2007-1187 (WIPO Oct. 16, 2007). 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 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.”). 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. Identical and/or Confusingly Similar The Panel finds that, under Policy ¶ 4(a)(i), Complainant has established rights in the FOSSIL mark. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business); see also 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 [or] have acquired secondary meaning.”). Respondent’s <fosil.net> domain name is confusingly similar to its FOSSIL mark. The disputed domain name differs from Complainant’s mark in two ways: (1) the letter “S” has been omitted; and (2) the generic top-level-domain (“gTLD”) “.net” has been added. The Panel finds that these two changes do not sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant contends that Respondent lacks all rights and legitimate interests in the <fosil.net> domain name. Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case against Respondent, and then the burden shifts to Respondent to show evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”). Complainant contends that Respondent is not commonly known as <fosil.net>. The WHOIS record for the disputed domain name lists Respondent as “Constramat.” Because of this evidence, along with Respondent’s failure to present evidence to the contrary, the Panel concludes that Respondent is not commonly known as <fosil.net> pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”). Respondent is using the <fosil.net> domain name to imitate Complainant’s website. Respondent is passing itself off as Complainant, and is using Complainant’s mark to exploit Complainant’s customers’ and potential customers’ assumptions that a website at <fosil.net> is affiliated with Complainant, when in fact it is owned by Respondent with no affiliation with Complainant. The Panel finds that this use of the <fosil.net> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The <fosil.net> domain name is confusingly similar to Complainant’s FOSSIL mark primarily because it removes an “s” from Complainant’s mark. Respondent’s use of the disputed domain names constitutes typosquatting since Respondent is attempting to take advantage of a common typographical error made by Internet users. This further evidences Respondent’s lack of rights and legitimate interests in the <fosil.net> domain name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered and is using the <fosil.net> domain name in bad faith by making it appear as though the website at that address is actually Complainant’s website. The Panel finds that Respondent’s use of the disputed domain name to pass itself off as Complainant, as well as its failure to provide evidence of any legitimate use of the domain name, is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). In several previous UDRP cases, Respondent has been found to have engaged in a pattern of conduct of registering and using domain names to redirect to the complainants’ websites, and that in each case Respondent was found to have registered and used the domain names in bad faith. See Banco Zaragozano S.A. v. Constramat, D2004-0044 (WIPO Mar. 15, 2004); see also Caixa D’Estalvis Laietana v. Costramat, D2007-1187 (WIPO Oct. 16, 2007). The Panel finds that this pattern of conduct is sufficient evidence that Respondent registered the <fosil.net> domain name to prevent Complainant from reflecting its FOSSIL mark in the domain name pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). Respondent’s disputed domain name slightly misspells Complainant’s FOSSIL mark. In Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003), the panel held that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant’s DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii). Similarly, in The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004), the panel concluded that “[b]y engaging in typosquatting, [r]espondent has registered and used the <vanguard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).” Like the domain names in Dermalogica and Vanguard, Respondent’s disputed domain names can be characterized as typosquatting because Respondent is trying to benefit from potential typographical errors made by Internet users. Therefore, the Panel finds that Respondent registered and is using the <fosil.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <fosil.net> domain name be TRANSFERRED from Respondent to Complainant. Sandra J. Franklin, Panelist Dated: April 3, 2008 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.