Complainant is ILS Holdings, LLC of Hollywood, Florida, United States of America (“U.S.”) represented by Amaury Cruz, P.A., U.S.
Respondent is Watches Wholesale of Kew Gardens, New York, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on January 26, 2012. On January 26, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On January 26, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant, providing contact details, and confirming other information relating to the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 20, 2012.
The Center appointed Debra J. Stanek as the sole panelist in this matter on February 27, 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
Complainant owns U.S. federal trademark registrations for the marks WORLD OF WATCHES and WORLDOFWATCHES.COM, each for online store services relating to watches. The registrations issued in 2000 and 2001, respectively, and claim dates of first use in the mid-1990s.
According to the Registrar, Respondent registered the domain name in July 20061. The domain name is currently used in connection with a website that offers watches for sale. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant owns the two U.S. trademark registrations referenced above for online retail sales of watches: WORLD OF WATCHES and WORLDOFWATCHES.COM, which issued in 2000 and 2001. Complainant has used the domain name since 1996.
The domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s mark in its entirety.
In addition, the WORLD OF WATCHES mark is the dominant or principal component of the domain name. The addition of the term “the” and subtraction of the term “of” does not detract from the confusing similarity between Complainant’s mark and the domain name. 2. Rights or Legitimate Interests
Respondent knew or should have known of Complainant’s registered marks at the time he registered the domain name. Complainant’s registrations provide constructive knowledge under U.S. trademark law; therefore it is not credible to assume that Respondent did not know of Complainant’s marks.
Complainant has not authorized, licensed, permitted or otherwise consented to Respondent’s use of its mark WORLDOFWATCHES.COM in the domain name.
Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the domain name. The domain name hosts Respondent’s website that offers the same services -- online retail store services featuring watches -- offered by Complainant under its marks.
Respondent’s use is not bona fide within the meaning of paragraph 4(c)(i) of the Policy because it is used Complainant’s mark for the purposes of attracting Internet users to its site for fraudulent purposes. 3. Registered and Used in Bad Faith
At the time Respondent registered the domain name, in 2005, it undoubtedly had knowledge of Complainant’s registered marks, which had been registered four to five years earlier.
The domain name is being used with the intention to attract Internet users to Respondent’s website for commercial gain, by creating a likelihood of confusion with Complainant’s marks.
By offering directly competitive services on Respondent’s website, Respondent is using the domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s WORLD OF WATCHES marks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not responded to Complainant’s arguments regarding confusing similarity or offered any of the types of evidence set forth in paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith. A. Identical or Confusingly Similar
Complainant has established its rights in the marks WORLD OF WATCHES and WORLDOFWATCHES.COM by virtue of the evidence of its U.S. federal trademark registrations.
In the Panel’s view, whether or not the domain name is confusingly similar to Complainant’s marks presents a somewhat close question. Contrary to Complainant’s assertion, the domain name does not incorporate the entirety of Complainant’s marks. The differences though small, are apparent: the article “the” is added and the preposition “of” is deleted. While these differences do not result in significant differences in the appearance of the mark, and result in relatively small differences in pronunciation, they do result in a difference in the meaning or connotation2.
Nonetheless, the Panel agrees that, as a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. That is the case here where the two principle components of the mark – the terms “world” and “watches” – also appear in the same sequence. Further, while Respondent might have been able to advance argument that the difference in connotation is significant, it has not, by virtue of its default, advanced any argument.
The Panel finds that the domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, Question 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c)(i) and (iii) of the Policy: It does not appear that Respondent is commonly known by the domain name. Nor does it appear that use of the domain name is noncommercial or otherwise a fair use. Complainant’s evidence shows that Respondent is using the domain name in connection with a website that offers services that directly compete with those of Complainant – a use that does not appear to be bona fide.
In the Panel’s view, this element might have presented a somewhat closer question had Respondent presented evidence regarding how it came to use the domain name and made arguments concerning its right to use the term “watch”, in combination with other terms, such as “world”, for a website that offers a wide array of watches. However, by virtue of its default, Respondent has not done so.
The Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name and Respondent has not rebutted such prima facie case. C. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its mark predate Respondent’s registration and use of the domain name. Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services. Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to respond, the Panel finds that Complainant has established that Respondent is using the domain name to attract visitors to its own web site through the use of a domain name that is confusingly similar to Complainant’s marks.
The Panel finds that Complainant has established that Respondent has registered and is using the domain name in bad faith. 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 domain name be transferred to Complainant.
Debra J. Stanek
Sole Panelist
Dated: March 12, 2012
1 The WhoIs record states that the domain name was “created” on August 2, 2005.
2 As a general matter, the Panel subscribes to the consensus view that the test for confusing similarity is satisfied where the relevant mark is recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), Question 1.2 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
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