The Complainant is Movado LLC, Silverside Carr Executive Center, 501 Silverside Road,, Wilmington Delaware, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Gator Web, New Orleans, Louisiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name <concordwatch.com> is registered with Network
Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2006. On July 18, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On August 9, 2006, Network Solutions, LLC 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 August 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2006.
The Center appointed Richard Hill as the sole panelist
in this matter on September 6, 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 sells watches under the registered trademark CONCORD and has common law trademark rights in the string CONCORD-WATCH. The trademark CONCORD was registered in 1957, with a claimed first use in 1937.
The Respondent is using the contested domain name
for a home page that provides a search engine for a variety of consumer goods,
including watches made by competitors of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that, through its related companies and licensees, it is a leading world-wide designer, manufacturer and distributor of prestige watches, and has been marketing those watches under registered trademark CONCORD.
According to the Complainant, CONCORD brand products are supported by strategic and highly visible advertising, promotions, and public relations programs all over the world, as well as integrated point-of-sale materials and product packaging, all of which serve to strengthen global awareness of the CONCORD brand.
Further, the Complainant states that, through its related companies and licensees, it maintains an Internet web site at the domain names <concord-watch.com> and <concord-watches.com>, which provides consumer information concerning its products, including watches etc.
According to the Complainant, the contested domain name entirely incorporates the Complainant’s mark and, as such, is confusingly similar to the Complainant’s mark.
The Complainant alleges that there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the contested domain name, which is identical to the Complainant’s mark. Certainly, the contested 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.
Further, according to the Complainant, the Respondent could not make any conceivable legitimate use of the contested domain in connection with watches, given the fame of the Complainant’s mark and the good will associated with it.
The Complainant alleges that the Respondent has registered and is using the Domain Name in bad faith under the Policy. The Complainant’s CONCORD mark enjoys international recognition. It is therefore inconceivable that Respondent was unaware of Complainant’s trademarks when it registered the Domain Name. Respondent’s choice of the Domain Name clearly reflects an intention to target Complainant’s Movado Company Stores and Complainant’s retail customers.
Next, says the Complainant, the Respondent is using
the contested domain name for a home page that provides a search engine for
a variety of consumer goods, presumably resulting in click-through revenue for
the Respondent. Such use is evidence of bad faith. Fox News Network, LLC
v. Warren Reid, WIPO Case No. D2002-1085
at Section 6 (use of domain name to increase Internet traffic to search engine
is evidence of bad faith); 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); 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).
According to the Complainant, in addition to improperly benefiting from click-through revenue generated by the search engine on the Respondent’s site, that site deliberately attempts to divert web traffic to competitors of the Complainant. Thus, on the right-hand side of the Respondent’s home page at the contested domain name, there are links to “Seiko Watch,” Citizen Watch,” “Raymond Weil Watches,” “Rolex” and several other competitor brands.
The Complainant states that, as prior arbitrators
have held, the use of a domain name to direct traffic to the sites of a complainant’s
competitors based on confusion with a complainant’s mark is evidence of
bad faith. See, e.g., Disney Enter., Inc. v. Nicolas Noel, NAF 0309000198805;
see also Luck's Music Library v. Stellar Artist Mgmt., NAF 95650 (finding
bad faith where Respondent linked the domain name to website offering services
similar to Complainant’s services); Etro S.p.A. v. Domain Registrations,
WIPO Case No. D2006-0207 at Section 6.C (intentional
use of confusingly similar domain name to attract Internet users to a website
with links to sites offering goods similar to complainant’s goods establishes
bad faith); Etro S.p.A. v. Domaincar, WIPO
Case No. D2006-0107 at Section 6.C (use of domain name as search engine
linked to websites offering same goods as complainant leads to presumption of
bad faith).
Finally, according to the Complainant, the Respondent’s
bad faith is shown by a pattern of registering domain names that incorporate
well-known trademarks of others – a fact that WIPO panels have consistently
held to constitute evidence of bad faith. See, e.g.,Valeant Pharmaceuticals
Int’l v. Johnny Carpela, WIPO Case
No. D2005-0786; Alloy Rods Global, Inc. v. Nancy Williams, WIPO
Case No. D2000-1392. The Respondent has registered numerous other domain
names that incorporate well-known trademarks (or misspellings thereof) of third
parties. For example, the Respondent has registered the domain names <swissarmyandswisswatches.org>
(incorporating the name and registered mark of the well-known line of watches
and handtools), <unitedway.info> (incorporating the name and registered
mark of the famous non-profit organization), <hilton-hotel-new-york.com>
(incorporating the name and registered mark of the famous hotel chain), <marshallmathers.org>
(incorporating in full the given name and sometimes-performance name of the
famous rapper Eminem), <jeepliberty.info> (incorporating in full the name
and registered mark of the well-known line of automobiles from DaimlerChrysler),
<nintendomullienium.net> (incorporating the name and registered mark of
the famous video game company), <beyonceknowle.com> (a misspelling of
the name of the famous singer and actress Beyonce Knowles), <addids.com>
(a misspelling of the name and registered mark of the famous line of shoes),
<blocbkuster.com> (a misspelling of the name and registered trademark
of the famous video store chain), among others. See, e.g., Briefing.com,
Inc. v. CostNet Domain Manager, WIPO Case
No. D2001-0970 (acquisition of misspelling of a trademark shows bad faith).
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
The Panel will first address the procedural issues related to the fact that the Respondent has defaulted and then analyse the evidence to determine whether the Complainant has proven, in accordance with article 4.a of the ICANN Policy that:
- The contested domain name is identical or confusingly similar to a trademark in which Complainant has rights,
- The Respondent has no rights or legitimates interests in the contested domain name, and
- The Respondent registered and used the contested domain name in bad faith.
I. The procedural issue related to the default of the Respondent
Since the Respondent has defaulted, this Panel must first determine what the procedural implications are of a default.
While the Policy, the Rules and the Supplemental Rules that govern these proceedings do not explicitly address this question, they do give some guidance. Notably, article 4(a) of the Policy states:
“In the administrative proceeding, the Complainant must prove that each of these three elements are present.” [emphasis added]
This Panel therefore holds that it cannot grant the Complainant’s request automatically, but that it must instead examine the evidence presented to determine whether or not the Complainant has proven its case as required by the Policy.
II. Analysis of the evidence in this case
A. Identical or Confusingly Similar
The Complainant has presented evidence that it owns the rights to the marks CONCORD and CONCORD-WATCH and it is obvious that the contested domain name is confusingly similar to the Complainant’s marks. The Panel accordingly find for the Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
Complainant has argued convincingly that the Respondent’s use of the disputed domain name could lead to consumer confusion. Therefore, the Respondent’s use of the disputed domain name cannot be held to be legitimate in the sense of the Policy. As the panel stated in Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (NAF December 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, nor does it represent a noncommercial or fair use under paragraph 4(c)(iii) of the Policy.”).
The Respondent has not responded, therefore it has not argued, much less presented evidence, to indicate that it has any rights to the disputed domain name. In accordance with Rule 14(b), the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. In this case, the Panel draws the inference that the Respondent does not have any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has satisfied its burden of proving that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant states that the disputed domain name points to a web page offering searches related to the Complainant’s business activities, and the Respondent is doing this in order to make a profit, and it presents evidence to support this allegation.
Further, it alleges and provides evidence to the effect that the Respondent is offering products made by the Complainant’s competitors, which can create consumer confusion.
Finally, it alleges and provides evidence to the effect that the Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name.
The Panel accepts the Complainant’s evidence and allegations.
In light of the above, the Panel agrees with the Complainant’s allegation
that the registration and use of the disputed domain name are in bad faith in
the sense of the Policy, in particular with respect to paragraph 4(b)(i), (ii)
and (iv) of the Policy.
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 <concordwatch.com> be transferred to the Complainant.
Richard Hill
Sole Panelist
Dated: September 11, 2006
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