The Complainant is Movado LLC of United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
The Respondent is Li Jin of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Hichina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2011. On December 28, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 29, 2011, the Registrar 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 disputed domain name. On January 4, 2012, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant submitted a reply, stipulating that a request that English be the language of proceedings was included in the Complaint filed with the Center. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 10, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2012.
The Center appointed Jonathan Agmon as the sole panelist in this matter on February 10, 2012. 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, Movado LLC, along with its affiliated companies (the "Complainant"), is a designer, manufacturer and distributor of prestige watches, jewelry and home and desk accessories, marketed under the mark MOVADO.
The Complainant has been marketing its watches under the MOVADO mark since 1927 through its own retail shops and through a selection of authorized independent retailers in over 50 countries around the world. Between 2009 and 2010 the Complainant has consolidated sales in excess of USD 180 Million.
The Complainant has filed and registered the mark MOVADO in multiple territories. The Complainant is currently the owner of various trademark registrations for the mark MOVADO. For example: United States trademark registration No. 1294171 – MOVADO, registered on September 11, 1984; United States trademark registration No. 3120578 – MOVADO, registered on July 25, 2006; United States trademark registration No. 3524973 – MOVADO FUTURE LEGENDS, registered on October 28, 2008; United States trademark registration No. 3785542 – MOVADO, registered on May 4, 2010; and others.
The Complainant expended significant resources throughout the years in promotion and advertisement throughout the world. In 2010 alone the Complainant spent in excess of USD 11 million in direct advertisements and promotions of it’s MOVADO mark. As a result of extensive use and publicity, the trademark MOVADO is solely associated with the Complainant. Furthermore, the MOVADO trademark has become well-known and well-recognized by the general public, and has generated significant goodwill.
The Complainant has also developed formidable presence on the Internet and is the owner of several domain names that contain the mark MOVADO, including and others. The Complainant is using these domain names in connection with its activities.
The disputed domain name was registered on November 3, 2011.
The disputed domain name results to a website that markets watches bearing the mark MOVADO, which are believed by the Complainant to be counterfeit goods. Moreover, the website, to which the disputed domain name results, makes use of photographs, banners and images owned by the Complainant, and is believed by the Complainant to be a counterfeit version of the Complainant's website. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the MOVADO trademark, in which the Complainant has rights, in that it incorporates the mark MOVADO as a whole.
The Complainant further argues that the MOVADO trademark is broadly and extensively used by the Complainant in connection with the sale of watches. The Complainant further maintains that the mark MOVADO is distinctive and famous and is known by the public as an indicator of a high quality watches brand, originating from the Complainant.
The Complainant further argues that the addition of the generic phrase "watch shop" to the Complainant's well-known MOVADO trademark does not mitigate confusing similarity between the disputed domain name and the Complainant's MOVADO trademark. The Complainant also maintains that the phrase "watch shop" is descriptive of the Complainant's products and services under the MOVADO mark and therefore enhances the likelihood that consumers will associate the disputed domain name with the Complainant.
The Complainant further argues that the Respondent does not make legitimate use of the disputed domain name.
The Complainant further argues it had not licensed or otherwise authorized the Respondent to use its MOVADO trademark. The Complainant further maintains that no relationship exists between the Complainant and the Respondent that would give rise to any right bestowed on the Respondent to use the MOVADO mark.
The Complainant further argues that the Respondent is not generally known by the disputed domain name.
The Complainant further argues that the Respondent's bad faith registration is evident from the fact that the Respondent incorporated a well-known trademark in the disputed domain name without having a credible reason for doing so.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark and in an attempt to profit from the goodwill associated with the Complainant's MOVADO trademark.
The Complainant further argues that the Respondent was aware of the Complainant's existence and of its MOVADO trademark at the time it registered the disputed domain name.
The Complainant further argues that the website, to which to disputed domain name resolves, is a virtual counterfeit of the Complainant's website. Furthermore, the goods sold through this website appear to be counterfeit goods. The Complainant argues that this further proves the Respondent's bad faith in using the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that: “Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceedings be in English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceedings:
a) The website operating under the disputed domain name is in English and does not incorporate the Chinese language;
b) The disputed domain name incorporates words in the English language, which relate to the nature of goods sold on the website that is operated under the disputed domain name;
c) The Complainant provides as evidence an English version of the registration agreement found on the website of the Registrar, alongside the standard registration agreement in Chinese;
d) The Respondent did not object to the Complainant’s request that English be the language of the proceedings.
Upon considering the above, the Panel decides to accept the Complainant’s request and rules that English be the language of the proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of several trademark registrations for the mark MOVADO. For example: United States trademark registration No. 1294171 – MOVADO, registered on September 11, 1984; United States trademark registration No. 3120578 – MOVADO, registered on July 25, 2006; United States trademark registration No. 3524973 – MOVADO FUTURE LEGENDS, registered on October 28, 2008; United States trademark registration No. 3785542 – MOVADO, registered on May 4, 2010; and others.
The disputed domain name differs from the registered MOVADO trademark by the additional words "watch" and "shop", and the additional gTLD “.com”.
The disputed domain name integrates the Complainant's MOVADO trademark in its entirety, as a dominant element.
The additional words "watch" and "shop" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's MOVADO trademark, as they are descriptive dictionary words that refer to the nature of the goods and services regularly provided by the Complainant under its MOVADO mark, and are therefore insignificant per se.
Previous UDRP panels have ruled that the mere addition of a non-significant element does generally not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
It was also decided that the addition of the gTLD “.com” to a domain name does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its MOVADO trademark or a variation thereof. The Respondent did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name well after the MOVADO trademark, owned by the Complainant, was registered. According to a trademark search performed by the Panel, the MOVADO trademark, owned by the Complainant, has been registered and in affect at least since the year 1984. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.
The disputed domain name currently resolves to a website that markets watches bearing the mark MOVADO, which are believed by the Complainant to be counterfeit goods. Moreover, the website, to which the disputed domain name resolves, makes use of photographs, banners and images owned by the Complainant, and is believed by the Complainant to be a counterfeit version of the Complainant's website.
The Respondent’s use of the MOVADO mark to promote the sale of similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with the likely knowledge of the Complainant and the Complainant's MOVADO trademark and their reputation, and subsequent intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made in the disputed domain name for quasi identical, goods to the ones the Complainant markets (as well as the Complainant’s counterfeit’s good) constitutes bad faith on behalf of the Respondent (See Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
Furthermore, the disputed domain name is confusingly similar to the Complainants' trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the Policy.
In light of the Complainant’s distinctive registered trademark and the Respondent’s use of the disputed domain name, the Panel finds that the registration and use of the disputed domain name, which is confusingly similar to the Complainant’s mark, creates likelihood that Internet users would be confused and identify the Respondent as either associated or affiliated with the Complainant.
The Panel notes that the Complainant claims that the Respondent has counterfeited its website by using photographs, images and banners owned by the Complainant. The Panel infers that the Complainant is in fact claiming that the website, operating under the disputed domain name, infringes upon the Complainant's copyright. While that may be the case, such finding is unnecessary for the purpose of this decision. The Panel cites the following with approval: "In cases where there is full scale reproduction of another's site there may well be both copyright infringement and bad faith but it is the unauthorised, unjustified and wholesale impersonation that justifies the bad faith finding" (Jupiter Investment Management Group Limited v. N/A, Robert Johnson,WIPO Case No. D2010-0260). Furthermore, previous UDRP panels have ruled that "to bring in an assessment of whether a registrant's activities are an infringement of some national intellectual property right is … both unnecessary and undesirable" (Jupiter Investment Management Group Limited v. N/A, Robert Johnson, supra.; also see Delta Air Transport NV (trading as SN Brussels Airlines) v. Theodule de Souza,WIPO Case No. D2003-0372). In view of these previous rulings, and given that this Panel has already concluded that the disputed domain name was registered and used in bad faith, the Panel finds it unnecessary and undesirable to provide a ruling as to whether copyright infringement has arisen from the Respondent's acts.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the similarity between the disputed domain name and the Complainant's trademark and the Respondent's use of the disputed domain name to sell goods that are regularly sold by the Complainant, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: February 21, 2012
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