WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Citizen Watch Company of America, Inc., d/b/a Bulova and Citizen Tokei Kabushiki Kaisha TA Citizen Watch Co., LTD. v. Domain Administrator, See PrivacyGuardian.org / Smail Beniari

Case No. D2019-2866

1. The Parties

Complainants are Citizen Watch Company of America, Inc., d/b/a Bulova (‘first Complainant”), United States of America (“United States”) and Citizen Tokei Kabushiki Kaisha TA Citizen Watch Co., LTD. (“second Complainant”), United States, represented by Fox Rothschild LLP, United States.

Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Smail Beniari, Morocco.

2. The Domain Names and Registrar

The disputed domain names <bulovafy.com> and <citizfy.com> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2019. On November 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on November 25, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amendment to the Complaint on November 29, 2020.

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” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2019. Respondent sent two communications on December 1, 2019, indicating that he is willing to transfer the Domain Names. The Center sent an email regarding possible settlement on December 2, 2019 to the Parties. Pursuant to the request of Complainants, the proceeding has been suspended since December 5, 2019. The proceeding was reinstituted on February 17, 2020, and the due date for Respondent to submit a Response was March 2, 2020. Respondent sent an email communication on February 17, 2020. The Center notified the Parties of the commencement of panel appointment process on March 4, 2020.

The Center appointed Marina Perraki as the sole panelist in this matter on March 23, 2020. 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. Procedural issues – Consolidation of Multiple Complainants

The Panel has considered the possible consolidation of the Complaint for the Domain Names. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1, paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.

The Panel notes the following features of the Domain Names in favor of the consolidation:

- both Complainants are obviously part of the same group of companies;

- both Complainants have a common grievance against Respondent as the Domain Names target the trademarks of their group of companies;

- as Complainants demonstrated, shortly after a Complainants’ agent placed a purchase order through the website operating under the Domain Name <bulovafy.com>, Respondent appears to have stopped using that Domain Name and began to forward traffic to the Domain Name <citizfy.com>; and

- it would be equitable and procedurally efficient to permit the consolidation.

The Panel finds that this Complaint consists of multiple Complainants that should, for the reasons discussed above, be permitted to have their Complaints consolidated into a single Complaint for the purpose of the present proceeding under the Policy. Respondent has not objected to the consolidation. The Panel therefore finds that it would be equitable and fair to permit the consolidation.

5. Factual Background

Complainants are members of the same group of companies active in the watch industry. First Complainant has used the mark BULOVA for more than 70 years, while second Complainant has used the mark CITIZEN for over 50 years. Over this period, through extensive advertising and the high quality of goods, the trademarks BULOVA and CITIZEN have become well known in the field of watches.

First Complainant holds trademark registrations consisting of or including the word BULOVA, such as:

- the United States trademark registration No. 513,364 BULOVA (word) filed on December 17, 1947, registered on August 9, 1949, for goods in international class 14; and

- the United States trademark registration No. 519,601 BULOVA (word in stylized letters) filed on September 16, 1947, registered on January 10, 1950, for goods in international class 14.

Second Complainant holds trademark registrations consisting of or including the word CITIZEN, such as:

- the United States trademark registration No. 709,938 CITIZEN (word) filed on May 23, 1960, registered on January 17, 1961 for goods in international class 14; and

- the United States trademark registration No. 803,079 CITIZEN (word) filed on June 11, 1965, registered on February 1, 1966, for goods in international class 9.

The Domain Name <bulovafy.com> was registered on August 11, 2019, and the Domain Name <citizfy.com> was registered on September 16, 2019.

Complainants became aware of Respondent’s registration of the Domain Name <bulovafy.com> in late August 2019 as a result of a domain name watch report. As Complainants demonstrated, the watch report included a screenshot from the website which operated under the Domain Name <bulovafy.com>, displaying the word “BulovaFy” prominently at the top of the web page, with the letters “Bulova” in black and the suffix “Fy” in red.

In September 2019, an agent of Complainants attempted to purchase two watches through the website “www.bulovafy.com” – a Bulova watch and a Citizen watch. Shortly thereafter, Respondent appeared to stop using the Domain Name <bulovafy.com> and forward traffic to a website operating under the Domain Name <citizfy.com>. The website “www. citizfy.com” also featured prominently the term “BulovaFy” at the top of the page.

Thereafter, Respondent took down all content of the websites under both Domain Names and since then, including on the date of filing of the Complaint, both websites have been inactive. As Complainants demonstrated, both websites included a “currently unavailable” notice along with the following statement at the bottom: “If you’re the owner of this store Please sign in to resolve the issue, or contact support”. On both websites, the words “sign in” included a link to a Shopify login screen and the words “contact support” a link to the Shopify support page. The suffix “-fy”, was, per Complainants, inserted in the Domain Names to falsely suggest to Internet users that the websites were Complainants’ means of selling BULOVA and CITIZEN brand watches through the Shopify sales platform.

Complainants attempted to send the cease and desist letter by courier first and then by post to the address corresponding to the company appearing on the websites as the seller, which was returned as undeliverable.

6. Parties’ Contentions

A. Complainants

Complainants assert that they have established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.

B. Respondent

Respondent did not formally reply to Complainants’ contentions. Respondent appeared to indicate that he was willing to transfer the Domain Names to Complainant through several email communications.

7. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainants must satisfy with respect to the Domain Names:

(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

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

(iii) the Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainants have demonstrated rights through registration and use on the BULOVA and CITIZEN trademarks.

The Panel finds that the Domain Names <bulovafy.com> and <citizfy.com> are confusingly similar to the BULOVA and CITIZEN trademarks of Complainants respectively.

The Domain Name <bulovafy.com> incorporates the trademark BULOVA of first Complainant in its entirety. This is sufficient to establish confusing similarity (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The Domain Name <citizfy.com> incorporates the dominant feature of second Complainant’s CITIZEN trademark merely substituting the ending “-en” with “-fy”. Therefore, second Complainant’s CITIZEN trademark is recognizable (WIPO Overview 3.0, section 1.7).

The suffix “-fy” which is added in the Domain Names, does not avoid a finding of confusing similarity (see Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Names <bulovafy.com> and <citizfy.com> are confusingly similar to the BULOVA and CITIZEN trademarks of Complainants respectively.

Complainants have established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any formal response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainants, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate prior to the notice of the dispute any use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, as Complainants demonstrate, the Domain Names resolved to websites containing content that suggested falsely that the websites were those of Complainants or of an affiliated entity or of an authorized partner of Complainants.

Per Complainants, Respondent is not an affiliated entity or an authorised distributor or partner of Complainants and no agreement, express or otherwise, exists allowing the use of Complainants’ trademarks on the websites of Respondent.

A distributor, reseller or service provider, can make a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name only if the following cumulative requirements are met (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.8.1): (i) respondent must actually be offering the goods or services at issue; (ii) respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) respondent must not try to “corner the market” in domain names that reflect the trademark.

These requirements are not cumulatively fulfilled in the present case. The Domain Names falsely suggested that they were official websites of Complainants or of an entity affiliated to or endorsed by Complainants. The websites reproduced, without authorization by Complainants, Complainants’ trademarks, without any disclaimer of association (or lack thereof) with Complainants. Lastly, per Complainants, the websites featured photos of Complainants’ other competitors’ watches and not only Complainants’ watches.

Furthermore, the use of a domain name which intentionally trades on the fame of another and suggests affiliation with the trademark owner cannot constitute a bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; AB Electrolux v. Handi Sofian, Service Electrolux Lampung, WIPO Case No. D2016-2416; WIPO Overview 3.0, section 2.5).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainants have established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainants who are the owners of the trademarks or service marks or to a competitor of those Complainants, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or

(ii) that Respondent has registered the Domain Names in order to prevent the owners of the trademarks or service marks from reflecting the marks in corresponding Domain Names, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites or location.

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. As per Complainants, Complainants’ BULOVA and CITIZEN trademarks are well known for watches. Because the BULOVA and CITIZEN trademarks had been widely used and registered at the time of the Domain Names registration by Respondent, the Panel finds it more likely than not that Respondent had Complainants’ marks in mind when registering the Domain Names (Aktiebolaget Electrolux v. RojIT Corporation, WIPO Case No. D2012-1330; Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388).

Respondent should have known about Complainants’ rights, due to the fact that Complainants’ marks had goodwill and reputation when the Domain Names were registered.

Furthermore, as Complainants demonstrate, the websites’ content related to the Domain Names was targeting Complainants’ trademarks, as they prominently displayed Complainants’ trademarks and offering watches for sale. This further supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users were likely to consider the Domain Names as in some way endorsed by or connected with Complainants (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367). This also further supports knowledge of Complainants and their field of activity.

As regards bad faith use of the Domain Names, Complainants have demonstrated that the Domain Names were used to create websites, which prominently displayed Complainants’ registered trademarks, thereby giving the false impression that they were operated by Complainants or a company affiliated to Complainants or an authorised partner of Complainants. The Domain Names operated therefore by intentionally creating a likelihood of confusion with Complainant’s trademark and business as to the source, sponsorship, affiliation or endorsement of the websites they resolved to. This supports the finding of bad faith use (Aktiebolaget Electrolux v. Priscilla Quaiotti Passos, WIPO Case No. D2011-0388 and WIPO Overview 3.0, section 3.1.4).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Names in bad faith.

Complainants have established Policy, paragraph 4(a)(iii).

8. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <bulovafy.com> and <citizfy.com> be transferred to first Complainant, Citizen Watch Company of America, Inc., d/b/a Bulova, and second Complainant, Citizen Tokei Kabushiki Kaisha TA Citizen Watch Co., LTD., respectively.

Marina Perraki
Sole Panelist
Date: April 6, 2020