WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fossil Group Europe GmbH and Fossil Group, Inc. v. Anke Eisenhower soho
Case No. DNL2017-0010
1. The Parties
Complainants are Fossil Group Europe GmbH of Basel, Switzerland and Fossil Group, Inc. of Richardson, Texas, United States of America, represented by LXA N.V., the Netherlands.
Respondent is Anke Eisenhower soho of Landsberg, Germany.
2. The Domain Name and Registrar
The disputed domain name <fossilnederland.nl> (the “Domain Name”) is registered with SIDN through Registrar.eu.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On February 15, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On February 16, 2017, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 17, 2017. In accordance with the Regulations, article 7.1, the due date for Response was March 9, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2017.
The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on March 27, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
According to the evidence submitted by Complainants, Complainants hold multiple trademark registrations for FOSSIL, including a Benelux trademark with registration number 0561512 and a registration date of August 1, 1995 and a European Union trademark with number 000431148 and a registration date of May 28, 2002. The trademark FOSSIL is used by Complainants in the design, production and sale of lifestyle accessories such as watches, jewelry, handbags and small leather goods.
The Domain Name, <fossilnederland.nl>, was registered by Respondent on September 1, 2016.
The Domain Name resolves to a webshop that appears to offer Complainants’ lifestyle accessories products.
5. Parties’ Contentions
Complainants submit that the Domain Name is identical or confusingly similar to the FOSSIL trademark as it contains the FOSSIL trademark in its entirety.
According to Complainants, in view of Complainants’ trademark, Respondent has no rights to or legitimate interests in respect of the Domain Name. Internet users are directed to a website which appears to sell Fossil branded goods. Complainants submit that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. According to Complainants, the website operated under the Domain Name is misleadingly furnished and decorated as if it is an original Fossil e-shop. The website contains pictures of Fossil branded products and it has the look and feel of an original Fossil sales channel. On the homepage of the website in the top-right corner a shopping cart image is visible in which ordered products can be placed prior to checkout. The misleading impression is created that it is a Fossil store. However, as Complainants further submit, the website to which the Domain Name resolves is used for fraudulent purposes. Evidence is provided by two complaints received by Fossil from consumers who have been cheated by the website “www.fossilnederland.nl”. These consumers have not received the items ordered after payment was made. Complainants also submit that Respondent has no formal, contractual relationship with Complainants. Respondent has no rights to or legitimate interests in the Domain Name since she does not have Complainants’ permission to use the Fossil trademark.
In addition Complainants advance several arguments based upon the Benelux Convention on Intellectual Property (“BVIE”) and the European Union Trademark Regulation 2015/2424 (“EUTMR”).
Complainants submit that Respondent has registered the Domain Name in bad faith. The screenshots of the website to which the Domain Name resolves show conclusively that the Domain Name is registered with an unlawful intention to run an illegal business and to commit trademark infringements. Respondent has no business relationship with Complainants, but has set up an illegal shop under the Domain Name filled with Fossil-branded items. Meanwhile, several complaints from consumers have reached Complainants. A consumer who ordered through this website and paid, did not get the ordered items delivered and no money was refunded. According to Complainants this is fraud.
Respondent did not reply to Complainants’ contentions.
6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
As Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
As a preliminary matter, the Panel notes that Complainants have submitted several arguments based upon the BVIE and the EUTMR. As the Regulations contain their own substantive rules on the basis of which the Panel has to decide, the Panel need not take into account the arguments of Complainants based upon the BVIE and the EUTMR.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainants must establish that the Domain Name is identical or confusingly similar to a trademark in which Complainants have rights.
Complainants have established that they have rights in Benelux and European Union trademark registrations for FOSSIL. The Domain Name, <fossilnederland.nl>, incorporates the entirety of the FOSSIL trademark. The Top-Level Domain “.nl” and the descriptive geographical term “nederland” may be disregarded for purposes of article 2.1(a) of the Regulations (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Panel finds that the Domain Name is confusingly similar to the FOSSIL trademark of Complainants.
B. Rights or Legitimate Interests
In the Panel’s opinion, Complainants have made a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name, as Respondent is not 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 of Complainants.
Based on the evidence provided by Complainants, the Domain Name resolves to a website where Fossil branded products are being advertised, purportedly offering genuine Fossil goods for sale at a substantial discount and imitating the overall “look and feel” of a Fossil e-shop – and indeed also lacking a disclaimer of a relationship to Complainants. Complainants have argued that Respondent, who is not a licensee of Complainants, offers for sale Fossil branded products that are most likely not being delivered, an illegitimate activity that is undoubtedly commercial and not bona fide in nature. Indications of the presumed fact that Respondent is using the Domain Name to defraud customers can be found in the customer complaints submitted as evidence by Complainants.
In the Panel’s view, the further circumstances of this case, which are similar to those of previous .nl cases “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Katja Braun’s nets, WIPO Case No. DNL2016-0060 and Coccinelle S.p.A v. Kaoyuanws Trade, WIPO Case No. DNL2017-0008, also cast doubt on the authenticity of Respondent’s operations for purposes of the Regulations.
The Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to Respondent in accordance with article 16.4 of the Regulations; the Center even used the “contact us” form on the Website. However, the Written Notice to the postal address as provided to SIDN by Respondent at registration of the Domain Name was undeliverable. Indeed, Respondent appears to have provided a fictitious address, as the street (“Schillerstrasse”) does not exist in the town (“86881 Landsberg”) mentioned in the contact details provided by Respondent upon registration of the Domain Name. The Panel also notes that no response has been submitted and that Respondent’s rather particular email address appears to bear no connection to the stated (or any other) business, and indeed does not provide any other relatable name or identity as would be expected in legitimate circumstances.
The fraudulent use by Respondent cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. As Respondent cannot be considered a genuine reseller, the Panel need not discuss further the so-called Oki Data criteria and considerations (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
Under these circumstances, the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
The Panel refers to its considerations under Section 6.B. Complainants have submitted evidence that Respondent, who knew that the Domain Name included Complainants’ trademarks, uses the Domain Name for fraudulent purposes. On this basis, the Panel finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of Complainants as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product on its website or location, which constitutes registration and use in bad faith pursuant to article 3.2(d) of the Regulations.
The Panel finds that the Domain Name has been registered and is being used in bad faith.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <fossilnederland.nl>, be transferred to Complainants.
Dinant T. L. Oosterbaan
Date: March 31, 2017