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Movado LLC v. Simo Elbaz [2005] GENDND 164 (17 February 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Movado LLC v. Simo Elbaz

Case No. D2004-1029

1. The Parties

The Complainant is Movado LLC, Wilmington, Delaware, United States of America, of the United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Simo Elba, Miami, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <wwwmovado.com>, is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2004. On December 7, 2004, the Center transmitted by e-mail to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On December, 2004, Wild West Domains transmitted to the Center by e-mail its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Complainant filed an amendment to the Complaint on December 17, 2004, to strike cancellation of the challenged domain name as an alternative remedy. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on December 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2005. The Response was filed with the Center on December 21, 2004, prior to the formal commencement of the administrative proceeding.

The Center appointed David W. Quinto as the sole panelist in this matter on February 3, 2005. 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

Complainant Movado LLC owns the trademark MOVADO in the United States pursuant to Certificate of Registration No. 1,294,171. The trademark registration was issued in September 11, 1984, with a first use in commerce claimed in 1927. The MOVADO mark is registered in International Class 14 for watches and parts therefor.

Complainant’s parent is Movado Group, Inc., which owns the domain name <movado.com>. However, Complainant also uses the <movado.com> domain name in connection with its marketing of MOVADO brand watches.

Respondent Simo Elbaz registered the challenged domain name, <wwwmovado.com>, on September 19, 2002.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the MOVADO brand watches, that it and its parent sell worldwide are famous internationally. Not only does Complainant use its parent’s Web site at “www.movado.com” in connection with the sale of MOVADO brand watches, but retail stores that sell MOVADO brand watches sometimes use the Internet in connection with the sale of such watches, as well. Based on the foregoing, Complainant alleges it has a protectable mark and that Respondent’s domain name is confusingly similar thereto.

Complainant further alleges that Respondent is not named or known as “Movado,” and does not transact business using that name. Indeed, Complainant alleges that when it searched for the “wwwmovado.com” web site, it was redirected to “www.moving411.com”, a commercial site registered to Respondent. Accordingly, Complainant alleges that Respondent lacks any rights or legitimate interests in the challenged domain name.

To the contrary, Complainant alleges that Respondent seeks to attract Internet users who are searching for Complainant’s Web site to his own Web site for commercial benefit. Complainant further alleges that Respondent uses the “www.moving411.com” Web site, to which visitors to the “wwwmovado.com” Web site are redirected, to further fraudulent activity. Specifically, Complainant alleges that Respondent and one of his moving companies were indicted on March 4, 2003, for wire fraud, extortion, and other violations of federal law. (However, Complainant fails to provide any evidence that Respondent was convicted of, or pled guilty to, any criminal activity.)

Complainant also alleges that Respondent has engaged in a pattern and practice of registering famous marks as domain names. For example, Complainant alleges that Respondent has registered 16 domain names incorporating the YAHOO! mark, as well as domain names incorporating the AOL, CITIBANK, and DIET PEPSI marks.

Finally, Complainant alleges that Respondent has twice previously been found to be a “typo pirate,” citing Bellsouth Intellectual Property Corp. v. Elbaz, WIPO Case No. D2003-0530 (September 8, 2003), and TMP Worldwide Inc. v. Register411.com, a.k.a. Simo Elbaz, No. FA0301000142321 (NAF February 26, 2003).

Based on the foregoing, Complainant alleges that Respondent has registered and is maintaining the challenged domain name in bad faith.

B. Respondent

In response to the Complaint, Respondent has submitted an “Answer and Affirmative Defenses.” Respondent’s “Answer” simply admits or denies the allegations of the Complaint. The “Affirmative Defenses” allege that Respondent is in the process of creating an “organization” to be called “World Wide Women’s Movers and Drivers Organization,” which would be known by the acronym “WWWMOVADO.” Further, Respondent denies that the prior UDRP decisions adjudicating him a typo pirate should be accorded any weight because he defaulted in those actions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Pursuant to Paragraph 4(a)(i) of the Policy, Complainant has the burden to show that the “respondent’s domain name is identical or confusingly similar to a trademark . . . in which the complainant has rights.” Here, Complainant has provided evidence that it owns the MOVADO mark in International Class 14 in the United States and that such mark remains in active use in commerce. Accordingly, Complainant has demonstrated that it has a protectable mark.

As his “First Affirmative Defense,” Respondent argues that “wwwmovado.com” is “obviously not identical” to <movado.com>, and is “not confusingly similar,” either. However, Respondent offers nothing beyond his own ipse dixit assertion to support his argument. In fact, in decisions too numerous to list, UDRP panels have increasingly applied the objective test of confusing similarity first enunciated in Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000). There, the panel concluded that “a domain name is ‘identical or confusingly similar’ to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name.”

Because Respondent’s domain name incorporates Complainant’s registered mark verbatim, the Panel finds that the first element is satisfied.

B. Rights or Legitimate Interests

Pursuant to Paragraph 4(a)(ii) of the Policy, Complainant has the burden to show that “the registrant has no rights or legitimate interests in respect of the domain name.” However, Paragraph 4(c) of the Policy allows a respondent to demonstrate its rights or legitimate interests in a domain name by, among other means, showing that it used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services before receiving notice of a dispute.

The means of demonstrating rights to or legitimate interests in a domain name include that the respondent “have been commonly known by the domain name” or that the respondent be making a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.” Here, it is undisputed that Respondent is not commonly known as “Movado.” Further, it is undisputed that Respondent is using the challenged domain name for commercial purposes. Accordingly, Respondent can claims rights or legitimate interests in the challenged domain name only if he used, or made demonstrable preparations to use, the challenged domain name in connection with a bona fide offering of goods or services before receiving any notice of the dispute. When Respondent was contacted by Complainant, Respondent was not making a bona fide use of the challenged domain name. Respondent simply used the domain name to redirect Internet visitors to a site purporting to offer moving services under the “moving411.com” name. Since being notified of the dispute, Respondent has used the challenged domain name to put up a “World Wide Women’s Movers and Drivers Organization” site that includes links to commercial sites offering job opportunities to female truck drivers. It is not necessary to decide whether Respondent’s new use of the challenged domain name is a bona fide use or, as appears more likely, a sham. The new use of the challenged domain name can avail Respondent nothing because it is untimely. When Respondent learned of the dispute, his use of the challenged domain name was not in connection with a bona fide offering of goods or services. Accordingly, the Panel concludes that Respondent has no rights or legitimate interests in the challenged domain name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that Complainant demonstrate that the challenged domain name “has been registered and is being used in bad faith.” In turn, paragraph 4(b) of the Policy enumerates without limitation four circumstances that “shall be evidence of the registration and use of a domain name in bad faith.” The fourth of those is that by using the domain name, the respondent must have “intentionally attempted to attract, for commercial gain, Internet users” by creating a likelihood of confusion with the complainant’s mark. It is on this basis that Complainant alleges that Respondent has acted in bad faith.

To prove this circumstance, a complainant must show that the respondent effected the registration in bad faith and engaged in subsequent bad faith conduct. However, it is usually not possible for a complainant to prove the registrant’s state of mind at the moment of registration. For that reason, bad faith registration will often be established by inference. As Complainant notes, various panels have held that bad faith registration may be inferred when a registrant registers a domain name that incorporates a well-known mark that depends on the commission of a typographic error to attract Internet users to the site. See Bellsouth Intellectual Prop. Corp. v. Elbaz, WIPO Case No. D2003-0530 (September 8, 2003); TMP Worldwide Inc. v. Register411.com, a.k.a. Simo Elbaz, No. FAO0301000142321 (NAF February 26, 2003); Nike Inc. v. Nike, WIPO Case No. D2001-1115 (November 7, 2001); World Wrestling Fed’n Entm’t, Inc. v. Bessette, WIPO Case No. D2000-0256 (June 7, 2000); and InfoSpace.com, Inc. v. Blanck, WIPO Case No. D2000-0069 (April 3, 2000).

Other panels have concluded that bad faith may be inferred if the respondent had actual or constructive knowledge of the complainant’s mark. See, e.g., TRW Inc. v. Autoscan, Inc., WIPO Case No. D2000-0156 (April 24, 2000); Bloomberg L.P. v. Boo Design Servs., No. FA0104000097043 (NAF May 17, 2001). Here, quite apart from the long registration and worldwide use of the MOVADO mark, Complainant points out that there are 41 authorized MOVADO retailers in and around Miami, Florida, Respondent’s city of residence. Thus, it is clear that Respondent had constructive, if not actual, knowledge of Complainant’s mark. Further, bad faith may be inferred from Respondent’s registration of domain names including other well-known or famous marks, such as YAHOO!, DIET PEPSI, AOL, and CITIBANK. Accordingly, the Panel finds that Respondent registered the challenged domain name in bad faith.

It is beyond peradventure that Respondent has intentionally attempted to attract Internet users to his Web site by creating a likelihood of confusion with Complainant’s mark. Persons seeking Complainant’s site but making the simple typographical error of omitting a period were redirected to Respondent’s site. Further, it is clear that far more Internet users would associate the MOVADO mark with Complainant’s products than with an as-yet nonexistent organization of moving van drivers. Accordingly, the Panel finds that Respondent registered and has used the challenged domain name in bad faith.

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 <wwwmovado.com>be transferred to the Complainant.

David, W. Quinto
Sole Panelist

Date: February 17, 2005