Generic Top Level Domain Name (gTLD) Decisions

BEFORE THE NATIONAL ARBITRATION FORUM

FOSSIL, INC.,

Complainant,

FILE NO. FA0001000092525

vs.

NAS,

Respondent.

FINDINGS OF FACT AND CONCLUSIONS

The above-entitled matter came on for an administrative hearing on February 23, 2000, before the undersigned on the Complaint of Fossil, Inc. ("Fossil") against Respondent NAS ("NAS"). The matter has been brought under the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") and the rules for Uniform Name Dispute Resolution Policy adopted by ICANN on October 24, 1999.

Complainant, "Fossil," is a Delaware corporation with its principal office at 2280 N. Greenville Avenue, Richardson, Texas 78082, USA. Complainant was represented by Molly Buck Richard and Jane A. O’Connell of Strasburger & Price, L.L.P. who may be contacted via e-mail at richardm@strasburger.com., via telephone at (512) 499-3674, via facsimile at (512) 499-3660, or at 600 Congress Avenue, Suite 2600, Austin, Texas 78701.

NAS’s contact is said to be Zakaria Ben-Salem, who is listed as accessible via e-mail at etcitty@LVCM.com, via telephone at (702) 873-0371 and via facsimile at (310) 354-1592. NAS’s e-mail address is said to be Contact@AHNET.net. Its telephone number is recorded as (310) 354-2626.

The domain name is fossilwatch.com, registered by the Respondent on September 13, 1999, with Network Solutions. NAS is located at 5415 W. Harmon Ave., #1064, Las Vegas, Nevada 89103 U.S.A. The Complaint herein was filed with the National Arbitration Forum on January 21, 2000. It was, in accordance with Rule 2(a)^* sent to Respondent on January 24, 2000 and the administrative proceeding was commenced pursuant to Rule 4(c). Notice of the commencement of the administrative proceedings was, in compliance with Rule 4(d), forwarded to ICANN and Complainant.

Though response to the Complaint was due from the Respondent by February 16, 2000, none was made.

The record further reflects that Plaintiff, Fossil, is the owner of proprietary marks in connection with watches, clothing, eyeglasses, accessories, retail stores, and other goods. Specifically, Fossil is the owner of the following trademarks and service marks registered on the principal register of the United States Patent and Trademark Office which incorporate the term Fossil (the "Fossil Marks"):

Complainant first used the word "Fossil" in connection with its watches as early as 1985 and it continues to use each of the aforementioned Fossil Marks since the dates of first use set forth in those registrations.

The domain name www.fossil.com was registered by Fossil with Network Solutions on June 3, 1995. Watches and other Fossil products are available for purchase from this site.

On September 13, 1999, Respondent NAS registered with Network Solutions for the domain name www.fossilwatch.com, which is the subject of the instant Complaint. The site represented by this domain name engages in the sale of various brands of watches. Fossil watches are not authorized to be sold through this site.

The undersigned concludes that Respondent’s domain name is confusingly similar to the Fossil Marks to which Complainant has rights. It would appear that the domain name is merely a combination of Complainant’s mark, "Fossil," and the principal or primary goods represented by that mark, the word "watch" and .com. The record before the undersigned does not reflect any rights or legitimate interest in the domain name by Respondent. The combination as registered by Respondent herein reflects a wrongful attempt by the Respondent to attract, for commercial gain, internet users to its web site suggesting affiliation specifically with Fossil watches. Respondent is deemed to have exercised bad faith in registering and using the domain name.

Continued, as well as past, unauthorized use by Respondent in interstate commerce of the domain name incorporating Fossil Marks constitutes an infringement of Fossil’s rights in the Fossil Marks. Such conduct constitutes harm to Fossil, Inc., as well as to those members of the public who may have been misled as to the quality and source of Respondent’s products. Additionally, a reasonable interpretation of the Respondent’s continued use of the domain name could lead a reasonable consumer to the erroneous conclusion that there was an affiliation or association between Fossil, Inc. and the Respondent. It is at the very least unfair competition and an infringement of Fossil’s rights in the Fossil Marks.

Accordingly, the undersigned DIRECTS THE RESPONDENT FORTHWITH TO CEASE USE OF THE DOMAIN NAME WWW.FOSSILWATCH.COM AND TO CAUSE SAME TO BE TRANSFERRED TO THE COMPLAINANT FOSSIL, INC.

The undersigned certifies that he has acted independently and has no known conflict of interest in serving as the arbitrator in this proceeding.

Robert R. Merhige, Jr.

HUNTON & WILLIAMS

951 East Byrd Street

Richmond, Virginia 23219

804/ 788-8711

Dated: February 23, 2000