The Complainant is Movado, LLC of Paramus, New Jersey, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., of United States of America.
The Respondent is Yi Zhang of Nanjing, Jiangsu, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with B, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to B, Inc. a request for registrar verification in connection with the disputed domain names. On December 30, 2011, B, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 4, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceeding. 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 its 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 Respondent registered the disputed domain names and on May 5, 2011.
The disputed domain names and currently resolve to parking webpages, which display the following error announcement: "404 not found. The page you are looking for might have been removed". The disputed domain names used to resolve to websites that advertised and marketed watches bearing the mark MOVADO, or described as "fake Movado watch[es]”. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain names are identical or confusingly similar to the MOVADO trademark, in which the Complainant has rights, saying that they incorporate 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 terms "watches shop" and "watches sale" to the Complainant's well-known MOVADO trademark does not mitigate confusing similarity between the disputed domain names and the Complainant's MOVADO trademark. The Complainant also maintains that the terms "watches shop" and "watches sale" are descriptive of the Complainant's products and services under the MOVADO mark and therefore enhance the likelihood that consumers will associate the disputed domain names with the Complainant.
The Complainant further argues that the Respondent does not make legitimate use of the disputed domain names.
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 names.
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 names without having a credible reason for doing so.
The Complainant further argues that the disputed domain names are likely to mislead or confuse the public as to their source or origin.
The Complainant further argues that the Respondent registered the disputed domain names in an attempt to attract, for commercial gain, Internet users to its websites 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 names.
The Complainant further argues that the goods sold through the websites, to which the disputed domain names resolve, appear to be counterfeit goods. The Complainant argues that this further proves the Respondent's bad faith in using the disputed domain names.
For all of the above reasons, the Complainant requests the transfer of the disputed domain names. 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 names is Chinese.
The Complainant requested that the language of the proceedings would 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 websites, to which the disputed domain names used to resolve, were in the English language;
b) The disputed domain names incorporate words in the English language, which relate to the nature of goods sold on the websites that were operated under the disputed domain names;
c) 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 names are 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 "watches" and "sale", and the additional gTLD “.com”.
The disputed domain name differs from the registered MOVADO trademark by the additional words "watches" and "shop", and the additional gTLD “.com”.
The disputed domain names integrate the Complainant's MOVADO trademark in its entirety, as a dominant element.
The additional words "watches", "sale" and "shop" do not serve sufficiently to distinguish or differentiate the disputed domain names 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 generally does 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 names are 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 names, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (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 names.
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 names. 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 names. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain names 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 maintained that the Respondent registered the disputed domain names 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 names (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 names it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the domain names are 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 names currently resolve to parking webpages, which display the following error announcement: "404 not found. The page you are looking for might have been removed". Nevertheless, the disputed domain names used to resolve to websites that advertised and marketed watches bearing the mark MOVADO, or described as "fake Movado watch[es]".
The Respondent’s previous use of the MOVADO mark to promote the sale of similar or identical goods to the goods being offered by the Complainant, or to promote goods that are declared as counterfeit of the Complainant's goods, is clear evidence that the Respondent registered and used the disputed domain names 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 names 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).
The fact that the Respondent ceased the use of the disputed domain names does not preclude the Panel from finding bad faith, having taken into consideration all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867. The Panel cites the following with approval: “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
Furthermore, the disputed domain names are 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 names, the Panel finds that the use of the disputed domain names, which are 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.
Based on the evidence presented to the Panel, including the late registration of the disputed domain names, the similarity between the disputed domain names and the Complainant's trademark and the Respondent's use of the disputed domain names to sell goods that are regularly sold by the Complainant and goods that are stated to be counterfeit goods, the Panel draws the inference that the disputed domain names were 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 names, and , be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: February 22, 2012
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