The Complainant is Movado LLC of Delaware, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Titan Net of Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <movadocompanystore.org> is registered with
Intercosmos Media Group d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2006. On June 29, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On June 29, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2006.
The Center appointed Alan L. Limbury as the sole panelist
in this matter on August 10, 2006. 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
The Complainant and its predecessors in interest have been selling watches in the United States of America since 1927 under the MOVADO name and mark. The Complainant’s MOVADO brand watches are currently sold by almost 11,000 retailers in over 60 countries around the world, including the United States of America.
The Complainant’s parent company, Movado Group, Inc., in addition to being a designer, manufacturer and distributor of watches, is also a designer and manufacturer of jewelry and personal accessories sold under the MOVADO brand. It is the owner of the domain name “movado.com”, which the Complainant uses in connection with marketing its watches under the MOVADO brand.
The Complainant owns numerous United States trademark registrations for the word MOVADO, the earliest being No. 1,294,171 registered on September 11, 1984, for watches and parts therefor, citing first use in commerce in March 1927. The Complainant’s Switzerland-based affiliate, Movado Watch Company SA, owns national trademark registrations for MOVADO in numerous African countries including registration No. 41643 dated August 8, 1994 in Kenya.
The Complainant’s licensee operates a nationwide chain of thirty company-owned retail stores selling its goods, each designated as Movado Company Store.
From 1999 to 2003, the Complainant’s affiliates spent in excess of $80 million to advertise and promote its MOVADO brand in numerous countries.
The disputed domain name was registered on January
25, 2006. It resolves to a shopping portal website having numerous links to
other websites offering a range of goods and services for purchase.
5. Parties’ Contentions
A. Complainant
The Complainant has registered rights in its MOVADO trademark. In particular, its 1984 registration is incontestable. The Complainant claims common law rights in the mark MOVADO COMPANY STORE. The MOVADO mark is famous.
The disputed domain name is confusingly similar to the Complainant’s MOVADO mark and identical to its MOVADO COMPANY STORE mark.
The Respondent cannot demonstrate or establish any legitimate interest in the domain name. There exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant's famous MOVADO mark. Certainly, the disputed domain name is not, nor could it be contended to be, a nickname of the Respondent or in any other way identified with or related to a legitimate interest of the Respondent. The Respondent cannot show any use of the disputed domain name in connection with a bona fide offering of goods or services and the Respondent has not been commonly known by the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith under paragraphs 4(b)(i), 4(b)(iii) and 4(b)(iv) of the Policy. The Complainant’s MOVADO mark enjoys international recognition and consequently the Complainant’s retail locations are well-known. It is therefore inconceivable that the Respondent was unaware of the Complainant’s trademarks when it registered the domain name.
The mere fact that the Respondent registered the confusingly
similar domain name without authorization is, in and of itself, evidence of
bad faith. See e.g., Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The
Polygenix Group Co., WIPO Case No. D2000-0163
(bad faith found where 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”).
The Respondent is using the disputed domain name as a general search engine for a wide array of goods and services, including watches and timepieces that compete directly with the Complainant’s products. The Respondent has obviously registered the disputed domain name primarily to trade off the Complainant’s reputation and divert Internet users who are otherwise searching for the Complainant or the Complainant’s retail locations, in order to bring those users to its own web site for commercial benefit.
Finally, the format of the Respondent’s search
engine site, with hundreds of links leading visitors to other commercial sites,
strongly suggests the Respondent is obtaining “click-through” revenue
from the domain name. Nokia Corp. v. Nokiagirls.com a.k.a. IBCC, WIPO
Case No. D2000-0102 (multitude of links to e-commerce websites can be reasonably
presumed to demonstrate commercial benefit). This exploitation of the Complainant’s
good will for financial gain by creating confusion further establishes the Respondent’s
bad faith. Nintendo of America, Inc. v. Pokemonplanet.net, et al.,WIPO
Case No. D2001-1020 (finding bad faith based on website format that strongly
suggested it was used to generate “click-through” revenue for the
Registrant).
B. Respondent
As mentioned, the Respondent did not reply to the
Complainant’s contentions.
6. Discussion and Findings
Although the hard copy notification of the Complaint was not delivered to Respondent at its street address in Kenya specified when registering the disputed domain name, the versions sent by email to the only email address specified by Respondent ([email protected]) and to [email protected] were delivered. Accordingly the Panel is satisfied that the Center discharged its responsibility under the Rules, paragraph 2(a), to employ reasonably available means calculated to achieve actual notice to Respondent of the Complaint.
Under the Rules, paragraph 5(e), if the Respondent
does not submit a Response, in the absence of exceptional circumstances, the
Panel shall decide the dispute based upon the Complaint. There are no exceptional
circumstances here. Accordingly asserted facts in the Complaint may be taken
as true and reasonable inferences may be drawn from the information provided
by the Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO
Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy,
WIPO Case No. D2003-0109; SSL International
plc v. Mark Freeman, WIPO Case No. D2000-1080
and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case
No. D2000-0848.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the domain name Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) the domain name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in its registered MOVADO mark. In addition, the Panel finds that this mark is famous and distinctive. Having regard to the descriptive character of the words “company store”, the record does not enable the Panel to conclude that the Complainant has common law trademark rights in MOVADO COMPANY STORE.
The test of confusing similarity under the Policy is confined to a comparison
of the disputed domain name and the trademark alone, independent of the other
marketing and use factors usually considered in trademark infringement or unfair
competition cases. See BWT Brands, Inc. and British American Tobacco (Brands),
Inc v. NABR, WIPO Case No. D2001-1480;
Britannia Building Society v. Britannia Fraud Prevention, WIPO
Case No. D2001-0505Vivendi Universal v. Mr. Jay David Sallenand
GO247.COM, Inc., WIPO Case No. D2001-1121,
and the cases there cited.
Applying this test, it is immediately apparent that the disputed domain name wholly incorporates the Complainant’s famous and distinctive mark MOVADO. The addition of the descriptive words COMPANY and STORE and the inconsequential gTLD .org do nothing to detract from the distinctiveness of the Complainant’s mark. Accordingly the Panel finds the disputed domain name to be confusingly similar to the Complainant’s MOVADO mark. The Complainant has established this element of its case.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case against a respondent,
the burden is on the respondent to provide evidence of its right or legitimate
interests under paragraph 4(c) of the Policy: see for example Cassava Enterprises
Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International
Limited, WIPO Case No. D2004-0753.
The Complainant’s assertions on this issue are sufficient to shift the burden of proof to the Respondent. In the absence of a Response, the Panel finds the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has established this element of its case.
C. Registered and Used in Bad Faith
In the absence of a Response, the Panel infers that the Respondent had actual
knowledge of the Complainant’s famous and distinctive mark when registering
the disputed domain name without the Complainant’s authority. The Panel
finds this was registration in opportunistic bad faith: Veuve Cliquot Ponsardin,
Maison Fondee en 1772 v. The Polygenix Group Co., WIPO
Case No. D2000-0163.
The Respondent’s use of the disputed domain name to lead Internet users to a shopping portal website is clearly misleading them into thinking the disputed domain name and the website are associated with Complainant. This is evidence of use in bad faith.
The Panel accepts that it is highly likely that the Respondent is deriving click-through revenue from the website. This brings the deception within paragraph 4(b)(iv) of the Policy and constitutes evidence of both bad faith registration and bad faith use.
Accordingly, the Complainant has established this element of its case.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <movadocompanystore.org> be transferred to the Complainant.
Alan L. Limbury
Sole Panelist
Dated: August 14, 2006
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