Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Movado LLC v. Online Marketing Realty

Case No. D2008-0757

 

1. The Parties

The Complainant is Movado LLC (the “Complainant”), of Delaware, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.

The Respondent is Online Marketing Realty (the “Respondent”) of Los Angeles, California, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <movadowatch.com> and <movadowatches.com> (the “Disputed Domain Names”) are registered with eNom (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2008 by email and May 16, 2008 in hardcopy. On May 15, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 15, 2008, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On May 22, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 22, 2008. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 11, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on June 12, 2008.

The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on July 10, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.

 

4. Factual Background

Complainant is the owner of the name and mark MOVADO, under which it has been doing business in the United States of America (“the United States”) since 1927. For over 80 years, the MOVADO name and mark has been continuously used to identify one of the world’s most widely recognized brands of high quality watches. Complainant has several registrations in the United States for the MOVADO mark, the earliest of which, Registration No. 1,294,171, was registered on September 11, 1984, for “watches and parts therefore” in International Class 14. In addition, Complainant’s parent company, Movado Group, Inc., is the owner of the domain name <movado.com>, which Complainant uses in connection with marketing its watches under the MOVADO brand.

Complainant’s MOVADO brand watches are currently sold by almost 3,800 retailers in over 50 countries around the world, including the United States. In the United States, Complainant sells its MOVADO brand watches (except for discontinued models) only through its own retail shops and through selected authorized independent retailers. Complainant has approximately 2,800 authorized dealers in the United States.

Complainant advertises its MOVADO brand watches in a variety of media, including catalogs, magazines, newspapers, radio, television, and on the Internet. In 2008, Complainant will spend in excess of $13 million to advertise and promote its MOVADO brand.

Between 2004 and 2008, MOVADO brand watches generated in excess of $2.2 billion in sales.

Respondent first registered each of the Disputed Domain Names with the Registrar on May 29, 2004, nearly 20 years after Complainant’s MOVADO mark was first registered and more than 75 years after Complainant’s MOVADO mark was first used in the United States. Complainant provided evidence that the Disputed Domain Names both resolve to “www.watchstore.com,” a website that provides “click-through” links to various websites, including links related to watches offered by Complainant’s competitors.

 

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant contends that the Disputed Domain Names are confusingly similar to its MOVADO trademark and, in fact, incorporate Complainant’s MOVADO mark in its entirety. Moreover, Complainant contends that the addition of a generic term, i.e., “watch” or “watches,” to the mark in each of the Disputed Domain Names enhances the likelihood that consumers will associate the Disputed Domain Names with Complainant. Complainant also contends that, given the unique character of the MOVADO mark, on seeing the Disputed Domain Names consumers will reasonably believe that the Disputed Domain Names are related to Complainant.

In addition, Complainant contends that Respondent cannot demonstrate or establish any legitimate interests in the Disputed Domain Names. Complainant contends that its MOVADO mark is a famous mark and that Respondent is not related in any way to Complainant’s business, nor was Respondent granted a license or permission to own or use a domain name incorporating Complainant’s famous mark. Complainant also contends that Respondent cannot show any use of the Disputed Domain Names in connection with a bona fide offering of goods or services.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith. Complainant contends that, given the fame of the MOVADO mark, Respondent has targeted Complainant in bad faith, and that Respondent could only have registered the Disputed Domain Names to capitalize in some way on Complainant’s hard-earned goodwill. Complainant contends that Respondent has registered the Disputed Domain Names primarily for the purpose of attracting Internet users, who are otherwise searching for Complainant’s <movado.com> website or for information on its MOVADO brand watches, to Respondent’s own website for commercial benefit.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the domain names under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, the Policy, Paragraph 4(a), requires Complainant to prove each of the following:

(1) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain names registered by Respondent; and

(3) that the domain names registered by Respondent have been registered and are being used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding based on Complainant’s undisputed allegations for which there are support, pursuant to the Rules, Paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, Paragraph 14(b).

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s MOVADO mark.

As an initial matter, the Panel finds that Complainant has rights in the MOVADO mark. Indeed, a previous UDRP Panel found that Complainant’s MOVADO mark is distinctive and famous. See Movado LLC v. Titan Net, WIPO Case No. D2006-0824 (ordering the domain name <movadocompanystore.org> be transferred to Complainant). This Panel agrees that Complainant’s mark is a well-known and distinctive mark in which Complainant has rights.

Moreover, the Disputed Domain Names are confusingly similar to Complainant’s MOVADO mark because they fully incorporate that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Each of the Disputed Domain Names consist of the distinctive MOVADO trademark and the addition of the generic term “watch” or “watches.” The addition of the term “watch” or “watches,” however, does not obviate the confusing similarity between the Disputed Domain Names and Complainant’s distinctive and well-known MOVADO mark. See, e.g., Oki Data Americas, Inc. v. Albert Jackson, WIPO Case No. D2004-0087 (holding that the inclusion of the generic term “printer” in <okidataprinter.com> was confusingly similar to complainant’s trademark OKIDATA); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (adding generic words to a distinctive mark “does not change the overall impression of the designations as being a domain names [sic] connected to the [c]omplainant”); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark); Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd., WIPO Case No. D2001-0398 (“The addition of the words ‘watch’ and ‘relojes’ (the Spanish word for wristwatches), generic terms that refer to the goods in connection with which the ROLEX trademark is used . . . does nothing to change the fact that the Domain Names incorporate the ROLEX mark.”). Further, both the words “watch” and “watches” are “associated with the Complainant and its business, strengthening rather than weakening the confusing similarity.” Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561 (concluding that when an additional word is “associated with the [c]omplainant and its renowned activities” the additional word strengthens rather than weakens the confusing similarity).

For these reasons, the Panel concludes that the Disputed Domain Names are confusingly similar to the MOVADO mark, a distinctive and well-known trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, Paragraph 4(c).

The Panel notes that Complainant bears the overall burden of proof regarding each element in the Policy, Paragraph 4(a). However, requiring a complainant to prove a negative (i.e., that the respondent lacks rights or legitimate interests in the domain name) could be an often impossible task, requiring the complainant to prove matters that are primarily within the respondent’s knowledge. Therefore, previous UDRP panels have recognized that a complainant is required to make at least a prima facie case that the respondent lacks rights or legitimate interests. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Once a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied Paragraph 4(a)(ii) of the Policy.

The Panel finds that, based on the following undisputed facts and allegations, Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Disputed Domain Names.

First, Complainant has asserted that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s MOVADO mark. The Panel also notes that nothing in the record suggests that Respondent is commonly known by the Disputed Domain Names.

Second, Complainant has submitted evidence that both the Disputed Domain Names resolve to “www.watchstore.com,” a website that does not directly sell watches of any kind. Rather, “www.watchstore.com” does nothing more than include “click-through” links to various websites, including links to Complainant’s competitors. Respondent’s use of the Disputed Domain Names to provide links to goods that are related to those of the Complainant does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick’s Foundation Inc. v. Wan-Fu China, Ltd., WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through’ scheme does not serve to establish a bona fide offering of goods or services”). Indeed, there is no evidence in the record that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services.

Third, the fact that Respondent included the word “watch” or “watches” in each of the Disputed Domain Names evidences that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Names. In fact, the undisputed record indicates that Respondent registered the Disputed Domain Names approximately 77 years after Complainant established rights in its MOVADO mark in the United States through use.

Having satisfied its initial burden, Complainant contends that Respondent cannot demonstrate or establish any legitimate interests in the Disputed Domain Names. Indeed, there is no evidence of record that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Names, without intent (a) for commercial gain, (b) to misleadingly divert customers, or (c) to tarnish the MOVADO mark. Because Respondent has not submitted any arguments or evidence in rebuttal, Respondent has not met its burden of demonstrating rights or legitimate interests in the Disputed Domain Names. In short, there is simply no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Names.

For these reasons, in accordance with the Policy, Paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and is using the Disputed Domain Names in bad faith. It appears from the undisputed evidence submitted by Complainant that Respondent is presently using the Disputed Domain Names in order to attract traffic to a web site for commercial gain (pay-per-click revenue), which previous UDRP panels have concluded may support a finding of bad faith. St. Baldrick’s Foundation Inc. v. Web Advertising, Corp., WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”); Arla Foods amba v. Jucco Holdings, WIPO Case No. D2006-0409 (“[T]he practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.”).

As already discussed, the Panel finds that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Names because Respondent combined the distinctive and well-known MOVADO mark with the word “watch” or “watches” in the Disputed Domain Names, words associated with the Complainant and its business. Compare PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

Moreover, a finding of bad faith is also supported in this case by evidence of Respondent’s serial registration of domain names that include widely known trademarks in which Respondent has no apparent rights. Bellsouth Intellectual Property Corporation v. Simo Elbaz, WIPO Case No. D2003-0530 (finding bad faith where respondent exhibited a “pattern of registering domain names that correspond closely to marks that are owned by others”). Complainant has produced documentation evidencing that Respondent has registered over 425 other domain names. Among the other domain names that appear to be owned by Respondent are <chopardwatch.com>, <chopardwatches.com>, <harrywinstonjewelry.com>, <omega-watches.com>, <tagheuerwatch.com>, and <tagheuerwatches.com>.

Finally, the Panel is further convinced of Respondent’s bad faith because it is highly unlikely that there is any legitimate reason for Respondent’s choice of the Disputed Domain Names incorporating Complainant’s distinctive and well-known MOVADO mark, and Respondent elected not to respond to the Complaint. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would not be illegitimate”); Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/”JCR co.”, WIPO Case No. D2000-1308 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant); eBay, Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (quoting Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the [r]espondent that would be legitimate.”).

Therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case.

 

7. Decision

For all the foregoing reasons, in accordance with the Policy, Paragraph 4(i), and the Rules, Paragraph 15, the Panel orders that the Disputed Domain Names, <movadowatch.com> and <movadowatches.com>, be transferred to Complainant.

---

Steven M. Auvil
Sole Panelist

Dated: July 22, 2008