World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Omega SA v. Domain Admin

Case No. DME2011-0001

1. The Parties

The Complainant is Omega SA of Biel/Bienne, Switzerland, represented by Collen IP, United States of America.

The Respondent is Domain Admin of Boston, United States of America.

2. The Domain Name and Registrar

The disputed domain name <omegawatch.me> is registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2011. On January 14, 2011, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name. On January 14, 2011, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o (“doMEn”)(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 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2011.

The Center appointed James Bridgeman as the sole panelist in this matter on February 24, 2011. 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 is owner of the OMEGA and OMEGA + Ω trademarks used in connection with the sale of horological and timekeeping instruments and retail store services for such goods.

The Complainant’s OMEGA and OMEGA + Ω trademarks are the subject of trademarks registrations in numerous countries worldwide including the United States of America where the Respondent resides.

The Complainant maintains its official website at “www.omegawatches.com”.

There is no information available about the Respondent except for the details on the registrar’s WhoIs and the allegations made in the Complaint.

The disputed domain name was registered on July 31, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it is the owner of and has rights in the OMEGA and OMEGA + Ω trademarks and submits that it has established a global reputation through its long and extensive use of the OMEGA trademark in association with the sale of timekeeping instruments and related products for many years, having first registered the OMEGA trademark in the United States of America in 1894. The Complainant furthermore relies in its rights as owner of a large global portfolio of registered trademarks and has provided a representative list of Complainant’s United States Trademark Registrations in an annex to the Complaint including United States trademark registration number 25036 OMEGA registered on July 24,1894 in respect of goods in class14; United States trademark registration number 566370 OMEGA registered on December 8, 1951 in respect of goods in class14; United States trademark registration number 577415 OMEGA registered on July 14, 1953 in respect of goods in class 14.

The Complainant submits that it maintains its official website at “www.omegawatches.com” to promote its genuine, high-quality watches bearing the Complainant’s OMEGA trademarks and has provided a print out of the website in an exhibit to the Complaint.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s OMEGA and OMEGA + Ω trademarks.

The Complainant argues that the disputed domain name consists of the Complainant’s OMEGA trademark in combination with the generic term “watch”, and the non-distinguishing ccTLD extension “.me”. The Complainant submits that the generic elements “watch” and “.me” are insufficient to distinguish Respondent’s domain from Complainant’s trademarks and asks this Panel to note that watches are the very goods for which the Complainant’s trademarks have achieved fame, citing, e.g., Omega SA v. Domain Admin, NAF Claim No. FA1302921 (Feb. 24, 2010) (finding <omegawatchstore.com> confusingly similar to Complainant’s OMEGA marks); Fossil, Inc. v. Galina Vilyus, NAF Claim No. FA0704000969285 (May 29, 2007) (<fossil-watches.com> confusingly similar to complainant’s FOSSIL trademark).

The Complainant argues that the Respondent is using the disputed domain name in connection with a website selling counterfeit watches, and thereby creates a high likelihood of confusion with the Complainant’s mark. The Complainant argues that an Internet user would be confused into believing that the disputed domain name <omegawatch.me> is owned, operated, or otherwise affiliated with or sponsored by the Complainant because disputed domain name is confusingly similar to the Complainant’s trademarks and the Complainant’s own domain name, and purports to sell Complainant’s watches,

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name <omegawatch.me>. The Complainant submits that the Respondent registered and uses the confusingly similar domain <omegawatch.me> to promote and sell counterfeit watches bearing Complainant’s trademarks and refers to printouts of the website to which the disputed domain name <omegawatch.me> resolves that were submitted in an annex to the Complaint.

The Complainant further submits that the website to which the disputed domain name <omegawatch.me> resolves is in fact a reproduction of the site previously located at “www.omegawatchstore.com” – the latter domain name having been transferred to the Complainant in a prior UDRP proceeding. See Omega SA v.Domain Admin, NAF Claim No. FA1302921 (Feb. 24, 2010) (finding respondent lacked rights or legitimate interests in <omegawatchstore.com>).

The Complainant submits that the website to which the disputed domain name <omegawatch.me> resolves is branded “Omega Watch Store” in the upper left corner of its homepage. In addition, in what is more than simple coincidence or chance typographical error, the FAQ section on the website to which the disputed domain name resolves refers repeatedly to “OmegaWatchStore.com.”

The Complainant submits that the Respondent is no more entitled to <omegawatch.me> than it was to <omegawatchstore.com>, which differ only by the generic term “store,” and which contain as their core element Complainant’s OMEGA trademark.

The Complainant complains that the WhoIs results for <omegawatch.me> show no indication that the Respondent, named “Domain Admin”, is commonly known by the disputed domain name, or any variant containing the term OMEGA. Further, the Complainant states that it has not authorized the Respondent to use its trademarks on the site located at “omegawatch.me”. The extent to which the Respondent may be commonly known by the disputed domain name should be deemed irrelevant, as any association between the Respondent and the disputed domain name accrued from illegal counterfeiting. The Complainant argues that for precisely this reason, the Respondent cannot claim that its use of the disputed domain name is a legitimate, fair use.

The Complainant argues that the Respondent’s use of <omegawatch.me> in connection with its counterfeiting activities constitutes a blatant attempt to capitalize on the goodwill associated with the Complainant’s trademarks by diverting Internet traffic away from the Complainant’s official website and genuine goods, towards the Respondent’s website selling counterfeit goods. The Respondent’s use of <omegawatch.me> diverts consumers seeking the Complainant’s genuine products, misleads consumers, and ultimately tarnishes the Complainant’s reputation through the sale of cheap counterfeit goods.

The Complainant submits that the disputed domain name <omegawatch.me> was registered and is being used in bad faith.

The Complainant submits that the Respondent chose to register a domain name containing the mark “omega” because the Respondent is in the business of selling counterfeit watches bearing the OMEGA trademarks. Based on their identical appearance and branding, <omegawatch.me> was registered for the exact same purpose as <omegawatchstore.com>, which was ruled registered in bad faith by the panel in Omega SA v. Domain Admin, NAF Claim No. FA1302921 (Feb. 24, 2010). The Complainant refers to print outs of the respective sites which are annexed as an annex to the Complaint to illustrate the similarity of the two sites. The Complainant argues that consequently, the Respondent’s registration of the disputed domain name should be considered to be in bad faith since its primary goal is to facilitate the sale of counterfeit watches. The Respondent’s use of the disputed domain name <omegawatch.me> to divert Internet users seeking the Complainant’s genuine products and official website in order to sell counterfeit (termed “discount” or “replica”) versions of the Complainant’s products disrupts Complainant’s business. See Omega SA v. Domain Admin, NAF Claim No. FA1302921 (Feb. 24, 2010).

The Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the products offered for sale on the Respondent’s website. The Complainant finally submits that the Respondent intends to mislead consumers into believing that the products obtained from <omegawatch.me> are genuine watches produced by the Complainant, evidencing the bad faith use and registration of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided sufficient evidence to prove that it has rights in the OMEGA trademark through long use and a large portfolio of registered trademark across the world including the United States of America where the Respondent resides.

This Panel accepts the Complainant’s submission that the disputed domain name <omegawatch.me> is confusingly similar to the Complainant’s OMEGA trademark. The disputed domain name is a combination of the Complainant’s distinctive OMEGA mark in combination with the descriptive word “watch” and the ccTLD extension “.me”. The Complainants trademark i.e. OMEGA is the dominant element of the disputed domain name. It is well established that when comparing a domain name and a trademark, the domain extension can usually be ignored. In this case, rather than serving to distinguish the domain name and the Complainant’s OMEGA trademark, the addition of the descriptive English language word “watch” merely adds to the confusing similarity because the Complainant’s business and reputation has been established in the manufacture and sale of timepieces.

This Panel finds therefore that the disputed domain name <omegawatch.me> is confusingly similar to the OMEGA in which the Complainant has rights and the Complainant is therefore entitled to succeed in the first element of the test paragraph 4 of the Policy.

B. Rights or Legitimate Interests

Under the Policy, once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the burden of evidence shifts to the respondent to demonstrate that it has such rights or legitimate interests.

In the present Complaint, the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant has established that it has rights in the OMEGA trademark and has established a global reputation in the use of the OMEGA trademark in connection with the sale of timepieces. The Complainant has convincingly argued that therefore the Respondent cannot accrue rights to use the confusingly similar domain name for the sale of watches or timepieces without the Complainant’s consent or other justifiable reason. Furthermore the Complainant has convincingly argued that the Respondent’s use of the disputed domain name, which is confusingly similar to the Complainant’s trademark, as the address of a website that used to offer for sale goods similar to those of the Complainant, and creating the impression that they are the Complainant’s goods, cannot result in the acquisition of a legitimate interest in the disputed domain name.

In the absence of any Response or other submission from the Respondent, this Panel finds on the balance of probabilities the Respondent has no rights or legitimate interests in the disputed domain name. It follows that the Complainant is entitled to succeed in the second element of the test in paragraph 4 of the Policy also.

C. Registered and Used in Bad Faith

This Panel finds that the Complainant has proven on the balance of probabilities that the disputed domain name was registered and is being used in bad faith.

The Complainant has an established international reputation in the use of the OMEGA trademark and has been using the name and mark for over a century in the United States of America where the Respondent resides. The Complainant’s reputation is in the field of watches and timepieces. It is most improbable that the Respondent might have chosen to register the words “omega” and “watch” in combination by coincidence.

Furthermore the disputed domain name used to resolve to a website established specifically for the purpose of selling without authorization watches similar to those produced by the Complainant. In the circumstances this Panel finds that on the balance of probabilities the disputed domain name was registered and is being used by the Respondent in bad faith.

It follows that the Complainant has established the third element of the test in paragraph 4 of the Policy and is entitled to succeed in the Complaint.

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 <omegawatch.me> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: March 3, 2011

 

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