WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rolex Watch U.S.A., Inc. v. NCSO
Case No. D2010-0948
1. The Parties
Complainant is Rolex Watch U.S.A., Inc. of New York, New York, United States of America, represented by Gibney, Anthony & Flaherty, LLP, United States of America.
Respondent is NCSO of Parker, Colorado, United States of America, represented internally.
2. The Domain Names and Registrar
The disputed domain names <denverrolex.com>, <houstonrolex.com>, <miamirolex.com>, <rolexdenver.com>, <rolexdfw.com>, <rolexhouston.com>, <rolexla.com>, <rolexlosangeles.com>, <rolexnewwatch.com>, <rolexnewwatches.com>, <rolexusedwatch.com>, and <rolexusedwatches.com> (the “Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2010. On June 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On June 10, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 15, 2010. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced June 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response July 6, 2010. The Response was filed with the Center July 5, 2010.
The Center appointed Lawrence K. Nodine, Diane Cabell and Jacques de Werra as panelists in this matter on August 3, 2010. The Panel finds that it was properly constituted. Each member of 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 is the exclusive distributor of Rolex watches in the United States and is responsible both for marketing and selling Rolex watches, watch bracelets and related products in the United States and for maintaining control over the quality of ROLEX products and services in the United States. The ROLEX mark has been in use continuously since Rolex was founded in 1905.
Complainant is the owner of the following U.S. trademark registrations:
Registration No. 101,819
Registered: January 12, 1915
Goods: Watches, clocks, parts of watches and clocks and their cases
Registration No. 1,753,843
Registered: February 23, 1993
Respondent’s business is in the initial phases of planning, developing and marketing Internet consumer reporting and information websites and business directory websites in category specific areas including luxury watches and related products.
Respondent registered the Domain Names from mid-2008 through 2009.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
It has trademark rights in the ROLEX mark by virtue of its registered trademarks identified above.
The Domain Names are confusingly similar to its registered trademarks because Complainant’s registered trademarks have acquired secondary meaning such that any product, advertisement or domain name bearing the ROLEX mark is immediately associated in the minds of consumers as being associated with Complainant.
The Domain Names wholly incorporate the ROLEX trademark as the dominant part of the Domain Names making them confusingly similar to Complainant’s ROLEX mark.
The addition of the generic and/or geographically descriptive terms “used”, “new”, “watch”, “watches”, “Denver”, “Miami”, “Houston”, “LA”, “Los Angeles” and “DFW” (Dallas Forth-Worth), does not impact the overall impression created by the ROLEX dominant portion of the Domain Names, leaving the Domain Names confusingly similar to Complainant’s ROLEX mark.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
The ROLEX mark has been used continuously since 1905.
Respondent is not authorized or licensed to use Complainant’s mark.
There is no connection or relationship between Respondent and Complainant.
Respondent has never been known as ROLEX or by the Domain Names and has no trademarks or trade names corresponding to the mark ROLEX.
The Domain Names either have no association with any website, default to a webpage called “Plesk” which has no connection to Complainant or its ROLEX trademark or link to another website owned by Respondent, namely, “www.watchused.com”.
The Domain Names are used by Respondent to traffic Internet users to the “www.watchused.com” website, to parking websites and to third party websites that offer goods bearing counterfeit products and competitor’s products.
Respondent has not shown any use of or demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent has knowledge of the ROLEX trademarks prior to registering the Domain Names indicating registration and use in bad faith.
Complainant’s ROLEX mark is famous worldwide.
Respondent registered the Domain Names decades after Complainant’s first use of the ROLEX mark in commerce.
Respondent’s manner in which it uses the Domain Names and the ROLEX mark are indications of bad faith.
Respondent continued to register the Domain Names after it had received multiple letters from Complainant making it aware of Complainant’s rights in the ROLEX mark.
The Domain Names are either 1) parking sites with placements of click-through advertisements linking users to other third party parking sites that offer for sale competing products from other watch companies, 2) sites that generate traffic to Respondent’s “Watch Used” website enabling Respondent to profit from Complainant’s ROLEX trademark or 3) sponsored links advertising counterfeit watches.
Respondent’s failure to use or to make preparations to use the Domain Names in connection with the offering of legitimate websites is evidence of bad faith.
With respect to paragraph 4(a)(i) of the Policy, Respondent alleges that:
The Domain Names are website addresses or titles which correspond to Internet Protocol addresses. They describe a geographic location or a condition, along with a manufacturer’s name so as to provide visitors to the website a general idea of what they may find on the site.
The mark is used solely for nominative purposes.
The Lanham Act permits a non-owner of a registered trademark to make “fair use” or “nominative use” of a trademark under certain circumstances without obtaining permission from the mark’s owner.
Respondent uses the Domain Names in a fair use nominative and good faith manner by providing full disclaimers on the websites.
Complainant does not use most of the domain names that it claims to own.
Complainant is seeking to stifle and eliminate resale of its product by others.
With respect to paragraph 4(a)(ii) of the Policy, Respondent alleges that:
Respondent has no registered trademarks corresponding to the Domain Names using Complainant’s mark.
Respondent’s use of Complainant’s trademark as part of the Domain Names is strictly for nominative use.
Respondent is a business information provider and online directory publisher and is in the initial stages of launching websites and building a business.
The Domain Names were purchased only recently and are being developed to report category-specific news and information and to provide online consumers with localized business and marketing directories for goods manufactured by and services related to Complainant.
Respondent has elected to temporarily use some of the domains as microsites or parking sites in some cases allowing Google Ads to generate incremental income until they are replaced with Respondent’s category-specific consumer news, information and business directories.
The Domain Names refer to Complainant’s trademark only as necessary to identify it as a subject of the website.
Respondent should not be held responsible for the content that website participants (such as Google and Adsense) provide.
Respondent provides a disclaimer on its published websites using Complainant’s mark stating that use of the ROLEX marks are for informational, product comparison and/or nominative use and disclaiming affiliation, association, partnership, sponsorship or other relationship with Rolex.
With respect to paragraph 4(a)(iii) of the Policy, Respondent alleges that:
Respondent knew of Complainant’s trademarks, but showed no bad faith in using them as part of the Domain Names that it registered.
Respondent is using Complainant’s mark for nominative fair use purposes, with the intent and purpose of developing and using the domains as a means of reporting news and information related to Complainant’s products and related goods and services, to offer comparison shopping opportunities for Consumers; and to provide a more cost efficient means for consumers and others to learn about, search for, buy and sell Complainant’s products and related services.
Respondent responded to all of Complainant’s written communications explaining that Respondent’s intended purpose for using Complainant’s mark in the Domain Names is in good faith and that the use of Complainant’s mark was and continues to be for nominative fair use and informational purposes.
While the websites for the Domain Names may or may not currently advertise goods or services, Respondent uses its subsidiary, AdOpener, to advertise and market Respondent’s services. Respondent’s intent and ongoing purpose is to develop its domains and to market goods and services from category-specific business sources and other providers.
Respondent does expect to eventually derive income from its websites by providing services marketed through AdOpener and through the websites themselves through advertisements included in the online business directories and not from Complainant’s alleged misuse of its mark.
Commercial gain is not unlawful activity; nor is it reasonable grounds for denying Respondent the right to own and use the Domain Names for the fair use purposes it intends for them.
By being neither proactive nor consistent in the measures it has taken and/or continues to take to secure and/or protect its interests in Internet domain names, Complainant does not come to WIPO with clean hands and cannot in good faith claim to have a history of carefully, wholeheartedly, diligently and/or consistently protecting of its marks in this case.
Respondent believes Complainant’s purpose in bringing this claim before WIPO is to Reverse Hijack the Domain Names Respondent rightly owns and uses (a) under the protection of nominative fair use doctrine and (b) for directory, news and informational purposes.
Respondent asserts that Complainant and its parent company attempt to take over others’ domains including the ones owned by Respondent because it is a highly effective way to:
(a) interfere with and/or control the marketing and of goods and services;
(b) limit free trade of its products - in general and specifically over the Internet - by limiting the sources where and the methods by which consumers are able to find and/or purchase Complainant’s products or product-related services;
(c) attempt to fix the prices of their products to consumers by increasing the consumer costs and time required to find/buy their products;
(d) control and/or eliminate opportunities for businesses and consumers to sell and/or purchased new, used and/or consigned products made by Complainant; and/or
(e) obtain others’ legally obtained and operated top level domain names by heavy-handed reverse-hijacking practices.
In filing this action, the Complainant is attempting to (1) misappropriate Respondent’s legally and properly owned Domain Names; (2) increase the costs of goods and services to the consumer; (3) obstruct the free-flow and efficient exchange of information on the Internet; (4) undermine the foundations of e-commerce; and (5) endanger many of the most fundamental activities on which the Internet and electronic commerce are based.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. (Policy, paragraph 4(a).)
A. Identical or Confusingly Similar
Given the United States Federal trademark Registration Nos. 101,819 and 1,753,843 for the mark ROLEX and Complainant’s continued use of the mark since 1905, the Panel finds that Complainant has trademark rights in the ROLEX mark.
The Panel also finds that the Domain Names are confusingly similar to the registered trademarks in which Complainant has rights. The Domain Names differ from Complainant’s registered trademarks only in that they contain the gTLD domain name suffix “.com” and the generic and/or geographically descriptive terms “used”, “new”, “watch”, “watches”, “Denver”, “Miami”, “Houston”, “LA”, “Los Angeles” and “DFW” (Dallas Forth-Worth). Use of these generic and geographically descriptive terms does not distinguish the Domain Names from the Complainant’s ROLEX mark. Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”); Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page, Yellow Page Marketing B.V., WIPO Case No. D2010-0817 (addition of city names following Complainant’s “Yellow Pages” mark did not avoid confusion); BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097 (addition of country name to a well-known trademark held not to alter the basic meaning of the domain name, such that domain name is confusingly similar to mark).
B. Rights or Legitimate Interests
The second element of the Policy requires proof that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Assuming Complainant proves a prima facie case and shifts the burden to Respondent, the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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." (Policy, paragraph 4(c))
Respondent did not refute Complainant’s allegations that Respondent is not licensed by Complainant and has not obtained permission, either express or implied, from Complainant to use and/or register any domain name incorporating Complainant’s ROLEX trademark, nor has Respondent ever conducted business under the ROLEX trademark. These certified allegations by Complainant are sufficient to make out a prima facie case and shift the burden of response to Respondent.
Respondent relies on the nominative fair use defense. However, the Panel rejects this defense primarily because Respondent does not confine its web pages to the products described by the domains. See Response at page 14: “By providing Internet Consumers with options in terms of additional sources of the Complainant’s products as well as opportunities to compare other products to those of Complainant…” See also Id., page 23 where Respondent describes its parked page “www.newrolexwatch.com” as containing “sponsored ads unrelated to the Complainant and related search ads for used products of the Complainant (which the Complainant prohibits its licensed affiliates to use) as well as replica, counterfeit and/or knock-off products of the Complainant.” Respondent’s pages are not limited to Rolex reseller links but also include Omega, Gucci and other brands (Complainant’s Exhibit P). “www.rolexlosangeles.com”, for example, does not appear to link to any Rolex dealers in Los Angeles (Complaint’s Exhibit Q). Instead the pages produce links for all types of watch sales (new and used, in and outside of the cities named in the domains). Because the content on Respondent’s pages is not accurately described by the domains, Respondent may not rely on the nominative fair use defense. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095.
Moreover, Respondent’s purported fair use is purely speculative. There is no “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”. The Panel is not persuaded by Respondent’s story that it intends to develop an informational site for Rolex consumers. Respondent does not claim to be a reseller. If it wanted to develop this business, it could have done so by now. There is no evidence (other than Respondent’s unsupported statement) of any effort to build the alleged business line--no evidence of, for example, sales calls to legitimate resellers, etc. The evidence of bona fide use is simply insufficient. Intelligent Medical Objects, Inc. v. Domains by Proxy, Inc. / Atif Zafar, WIPO Case No. D2009-1342 (“While the [r]espondent expressed his intention to eventually use the domain name to resolve to a non-revenue producing educational site for various medical devices, those intentions – which further have not been supported by any evidence – are nothing more than mere expectations – expectations that may never become reality. As such, the [p]anel looks at past and present, but not possible future, use.”).
The second requirement of paragraph 4(a)(ii) of the Policy is, therefore, satisfied.
C. Registered and Used in Bad Faith
Registration is in bad faith because Respondent’s purpose in registering the Domain Names was to use them to intentionally attempt to “attract, for commercial gain, Internet users to [his] web site or other on-line location, by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement of [his] web site or location or of a product or service on [his] web site or location.” We deduce this because Respondent showed no evidence to support his story about developing a reseller information site.
Use is also in bad faith because Respondent hasn’t limited the links to Rolex resellers, nor is Respondent a reseller himself, nor does the evidence show that he is working on behalf of any resellers. Had his links only produced Rolex reseller links that fit the descriptions of the Domain Names, then his current use might have qualified as a bona fide directory service, but they were not so limited. Instead they produced results for all types of watch sales (new and used, in and outside of the cities named in the domains) in which case Respondent would have been better served by registering domains such as <usedwatches.com>. This simply contributes to the overall picture that it never truly intended to do anything but trade on the brand.
Respondent contends that it is not responsible for search results provided by “website participants” (such as Google and Adsense) that link to competitive sites. Response, page 13. The Panel rejects this contention. Intelligent Medical Objects, Inc. v. Domains by Proxy, Inc. / Atif Zafar, WIPO Case No. D2009-1342 (Registrar posting competitive links on parked page acts as domain owner’s agent; Registrant has duty to police; “In such instances, the [r]espondent is liable to third-parties for whatever harm results from that content. The [r]espondent here is held to a duty to the Internet user community of exercising due vigilance over its website in supervising the actions of the [r]egistrar to ensure that the [r]espondent's website, specifically its parking page, did not include any unauthorized, let alone objectionable, content posted by the [r]egistrar, and to remove all such content found and expressly instruct the [r]egistrar not to post any further such content going forward”).
Respondent also contends that its posting of a disclaimer cures any problems. The Panel does not agree. The disclaimer comes too late, as the confusion has already occurred before a user discovers (if he ever does) the disclaimer. RapidShare AG, Christian Schmid v. BlueHost.com Inc., Ben Ahmed Nejib, WIPO Case No. D2010-0891 (“The [p]anel accepts the [c]omplainant’s contentions that a disclaimer is ineffective to dispel bad faith in the use of the [d]omain [n]ame, as by the time Internet users see the disclaimer, the unauthorised use has already occurred, and Internet traffic has already been diverted to the [w]ebsite”); Avon Products, Inc. v. Simon Lee / Domains by Proxy, Inc., WIPO Case No. D2010-0668, (“Although there is a disclaimer at the bottom of the website’s pages, it only comes after substantial reference to the [c]omplainant’s products using the [c]omplainant’s trademark AVON throughout the website, and is ineffective in precluding consumer confusion. The disclaimer is a sham.”); Zynga Game Network, Inc. v. George Haritos and Just Add Chips LLC, WIPO Case No. D2009-1478, (“... the [p]anel agrees with the many prior UDRP panels that have ruled such disclaimers to be ineffective in voiding the bad faith inherent in registering and using domain names that have already lured unwitting Internet users to a respondent’s website based on the infringement of legitimate trademarks or service marks.”). This holding is not inconsistent with cases like Steinway, Inc. v. Carey Simon, NAF Claim No. 1318229 (legitimate reseller in business for 35 years entitled to invoke nominative fair use; disclaimer noted).
Accordingly, Complainant has proved that Respondent registered and used the Domain Names in bad faith.
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 Names, <denverrolex.com>, <houstonrolex.com>, <miamirolex.com>, <rolexdenver.com>, <rolexdfw.com>, <rolexhouston.com>, <rolexla.com>, <rolexlosangeles.com>, <rolexnewwatch.com>, <rolexnewwatches.com>, <rolexusedwatch.com>, and <rolexusedwatches.com> be transferred to Complainant.
Lawrence K. Nodine
Jacques de Werra
Dated: September 3, 2010