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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

TechnoMarine and TechnoMarine SA v. Private

Case No. D2008-1186

 

1. The Parties

Complainant is TechnoMarine, Miami, Florida, United States of America and TechnoMarine SA, Geneva, Switzerland, represented by Tucker & Latifi, LLP, United States of America.

Respondent is Private, Fair Oaks, California, United States of America.

 

 

2. The Domain Name and Registrar

The disputed domain name <technomarinewatch.net> is registered with GoDaddy.com, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2008. On August 5, 2008, the Center transmitted by email to GoDaddy.com Inc. a request for registrar verification in connection with the domain name at issue. On the same date, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 15, 2008 providing the registrant and contact information disclosed by the Registrar, and identifying certain other deficiencies in the Complaint. The Center requested Complainant to submit an amendment to the Complaint. The Complaint filed an amended Complaint on August 16, 2008. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 on August 21, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 12, 2008

The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 17, 2008. 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.

Following its initial review of the Complaint, the Panel considered the evidence supporting Complainant’s claims to certain trademark registrations to be insufficient. Consequently, the Panel issued the following Administrative Order No. 1 on October 1, 2008:

“Complainant has asserted ownership of various trademark registrations for TECHNOMARINE in a number of countries, including in the class covering watches. Complainant has submitted various trademark registration numbers, but has failed to provide evidentiary backup to support the validity of those registrations. The Panel initially attempted to cure this deficiency by reference to the U.S. Patent and Trademark Office Trademark Application and Registration Retrieval system (TARR) database. U.S. registration number 2932608, dated March 15, 2005, in international class (IC) 14, for TECHNOMARINE covering, inter alia, watches, is owned by an entity other than Complainant (Pomair Trading, Inc., British Virgin Islands), with no explanation from Complainant. At least one USPTO registration for the term TECHNOMARINE, number 2832337, dated April 13, 2004, in IC 3, covering, inter alia, cosmetics, is reported by TARR as owned by Complainant. This registration does not cover watches.

The Panel will not engage in further independent research concerning ownership of trademark registrations. Complainant is directed to electronically transmit to the Center … supporting evidence of ownership of valid and subsisting trademark registrations in TECHNOMARINE with respect to watches within five business days of this Administrative Order. The Panel will not consider ownership of trademark registrations covering watches established in the absence of supporting evidence.”

Complainant responded to Administrative Order No. 1 by email with attachments dated October 1, 2008.

 

4. Factual Background

Complainant Technomarine S.A. asserts ownership of a substantial number of trademark registrations for the term “Technomarine”, including with design, in the United States of America (“United States”), Switzerland, France, Taiwan, Province of China and Thailand. Complainant initially furnished only a list of trademark registrations, including registration numbers, in its Complaint. Pursuant to an Administrative Order issued by the Panel, Complainant furnished evidence of ownership of trademark registrations for TECHNOMARINE in the United States by submission of copies of registrations on the Principal Register and by submission of recent correspondence with the USPTO evidencing recordation of certain assignments to Complainant. Complainant failed to provide evidence of assignment of the trademark registration most directly pertaining to watches, USPTO registration number 2932608, dated March 15, 2005, in IC 14. The Panel rejects that claim of ownership. The Panel further rejects Complainant’s claims of ownership of trademarks outside United States because of Complainant’s failure to substantiate those claims by submission of copies of certificates of registration, current status printouts from national registration authorities or otherwise. Nonetheless, Complainant has substantiated ownership of several trademark registrations for TECHNOMARINE in the United States, including service mark registration number 2719863, dated May 27, 2003, in IC 35, covering “retail store services in the field of general merchandise; namely, jewelry”, claiming date of first use and first use in commerce of November 1, 2001. Other USPTO TECHNOMARINE registrations cover, inter alia, textiles, sunglasses, paper goods and cosmetics.

Complainant markets a line of products including watches and cosmetics in the United States and elsewhere. Complainant asserts that it has spent “millions and millions of dollars advertising TECHNOMARINE branded watches in all types of advertisements”. (Complaint) Complainant asserts that it initiated this business at least as early as 1997, and that products sold under the TECHNOMARINE trademark have generated “Millions and Millions of Dollars in retail sales”. Complainant operates a commercial Internet website at “www.technomarine.net” which it claims to have operated for eight years. It states that it registered the domain name associated with that website on or about February 16, 2000.

According to the registrar’s verification report, Respondent “Private” is registrant of the disputed domain name, <technomarinewatch.net>, with Oaks, Marion (at the same address) as the administrative and technical contact. According to the registrar’s verification report, the record of registration of the disputed domain name was created on November 16, 2007.

Although Complainant did not provide direct evidence of Respondent’s use of the disputed domain name, the case file assembled by the Center includes a printout dated August 21, 2008 of a website addressed by the disputed domain name headed in large bold letters “TECHNOMARINE WATCH”. The home page includes a description of the Technomarine watch line as well as links to Internet retailers selling Swiss Tudor, Breitling, Timberland and Russian Pilot’s watches, as well as Technomarine watches. Along the left-hand side of the home page are links to descriptions of various Technomarine watch models. The identifier “Ads by Google” is displayed on the two pages of the website furnished by the Center.

By express letter, e-mail and fax dated June 4, 2008, Complainant through its counsel sent a cease and desist and transfer demand to Respondent at the address indicated on its registration for the disputed domain name. Respondent did not reply to that communication.

The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark and service mark TECHNOMARINE established by use in commerce and as evidenced by registrations in the United States and other countries.

Complainant argues that the disputed domain name is confusingly similar to its trademark, adding only the term “watch” that is descriptive of the product line of Complainant.

Complainant contends that Respondent has engaged in a “piratical and unauthorized use” of its trademark. Complainant argues that, “There can be no legitimate business reason provided for Respondent’s use [of the mark] in connection with the Infringing Domain Name”.

Complainant states that Respondent is intentionally attempting to attract for commercial gain Internet users to its website by using Complainant’s mark to create confusion as to Complainant’s sourcing, sponsorship, affiliation or endorsing of Respondent’s website.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

The Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding to Respondent by email and express courier to the address provided in its record of registration. Despite multiple efforts by the express courier, the courier was unable to complete delivery. There is no indication in the records of the Center of difficulty in transmission of email to Respondent, yet there has been no email response in this proceeding from Respondent.

The Center has taken those steps designated by the Rules for discharging its responsibility to provide notice of the proceedings to Respondent. The Panel is satisfied that Respondent was given adequate notice of these proceedings within the context of the Policy and Rules, and that each party has been given adequate opportunity to present its position.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has furnished evidence of ownership of registration of the trademark and service mark TECHNOMARINE on the Principal Register of the USPTO. Such registration establishes a presumption of rights in favor of Complainant. Respondent has not contested those rights. The Panel finds that Complainant has established rights in the trademark TECHNOMARINE.

Although Complainant has not specifically demonstrated trademark rights in the class of “watches” because it has failed to provide evidence of assignment of a mark in this class, Complainant has demonstrated rights in the class of retail jewelry sales, which would include watches. Respondent on its website has provided evidence of the watches marketed by Complainant. Although the Panel regrets being put in the position of having to draw an inference regarding the scope of Complainant’s trademark rights as a consequence of the seemingly weak performance of its counsel, the Panel is not prepared to penalize Complainant in these particular circumstances. The Panel finds that Complainant’s trademark rights are sufficiently broad to encompass watches within the class of jewelry for which a service mark has been established.

The disputed domain name <technomarinewatch.net> is distinguished from Complainant’s mark solely by addition of the noun “watch”. Because this noun identifies a product sold under Complainant’s mark. The added term does not reduce the likelihood of confusion as between the service mark and the disputed domain name. Addition of the generic top-level domain (gTLD), “.net”, does not affect this likelihood of confusion analysis. The Panel finds that the disputed domain name is confusingly similar to Complainant’s service mark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). 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 has not attempted to demonstrate rights or legitimate interests in the disputed domain name. Respondent was obviously aware of Complainant’s service mark when it registered and used the disputed domain name because its website prominently displays Complainant’s watches and describes Complainant’s business. This is not a bona fide offering of goods prior to notice of a dispute. There is no evidence that Respondent has been known by the disputed domain name, and there is no evidence that Respondent was authorized by Complainant to use its service mark. Respondent is not making fair commercial use of Complainant’s mark because, inter alia, its active commercial Internet website prominently links to sellers of competing watch brands.

Complainant has succeeded in demonstrating that Respondent lacks rights or legitimate interests in the disputed domain.

C. Registered and Used in Bad Faith

The Policy indicates that “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith” (Policy, paragraph 4(b)). Among these circumstances are that a respondent “by using the domain name, [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on‑line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location of a product or service on [its] website or location” (id., para. 4(b)(iv)).

Respondent’s commercial Internet website is designed to give the appearance of affiliation with Complainant and its service mark. It prominently describes Complainant and its business, providing links to sellers of Complainant’s products and to sellers of third-party competitor products. There is nothing on the website to suggest that Complainant is not its sponsor. Respondent is using the disputed domain name intentionally to attract for commercial gain Internet users to its website by creating a likelihood of confusion as to Complainant’s sponsorship of or affiliation with its website.

Complainant has succeeded in demonstrating that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

 

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, <technomarinewatch.net>, be transferred to Complainant.

 

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Frederick M. Abbott
Sole Panelist

Dated: October 7, 2008