19th Jul 2000

 

 

DECISION

 

Geneva Watch, Inc. v. Rafique Budhwani, a/k/a Ricky Budhwani & Watch Factory, Inc.

Claim Number: FA0105000097323

 

PARTIES

 

The Complainant is Geneva Watch, Inc., Miami, FL, USA (“Complainant”) represented by Ari Goldberger. The Respondent is Rafique Budhwani Watch Factory, Inc., Sugar Land, TX, USA (“Respondent”) represented by Al Harrison of Harrison & Egbert.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <genevawatch.com>, registered with Tucows.

 

PANEL

 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Daniel B. Banks, Jr., as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 25, 2001; the Forum received a hard copy of the Complaint on May 29, 2001.

On Jun 11, 2001, Tucows confirmed by e-mail to the Forum that the domain name <genevawatch.com> is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On June 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 2, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@genevawatch.com by e-mail.

A timely response was received and determined to be complete on July 2, 2001.

Complainant filed an Additional Submission, which was timely, filed and received according to The Forum’s Supplemental Rule #7.

On July 6, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.

 

RELIEF SOUGHT

 

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant:

Complainant, Geneva Watch, Inc., is a Florida Corporation and is a wholly owned subsidiary of Royal Watch, Inc. Since 1986, Complainant has been an importer and seller of quality analog quartz watches marketed under the trademarks GQI Geneva Quartz and Geneva Watch. Complainant has approximately 3,000 customers in the United States, Canada, South America, Central America and Europe. Annual sales are $1.5 million. In January 1996, Complainant registered the domain name GENEVA-WATCH.COM, and shortly thereafter began operation of an Internet site selling its watches.

Complainant has two registered trademarks for GQI GENEVA QUARTZ for watches (typed drawing)(Reg. No. 1567037) and G Q I GENEVA QUARTZ (design plus words)(Reg. No. 2403976). Complainant also claims common law trademark rights for GENEVA WATCH by virtue of its use of the mark for almost twenty years.

On May 31, 2000, Respondent registered the domain name GENEVAWATCH.COM. When this domain name is typed, a generic “under construction” page from Easyhosting.com appears. Respondent has no intention of operating any business or offering goods or services in connection with this domain name, it being Respondent’s sole intention to profit by selling the domain name to Complainant.

On June 9, 2000, Complainant, through counsel, sent a letter to Respondent asserting its rights to GENEVAWATCH.COM and demanding transfer of the domain name. Respondent never replied to this letter. In September, 2000, Respondent advised Complainant that it could acquire the domain name for a substantial sum (the amount is not alleged) stating that he was aware of many people who have made a lot of money simply by registering domain names and later selling them for hundreds of thousands of dollars.

The disputed domain name “GENEVAWATCH.COM” is confusingly similar to Complainant’s registered trademark and is identical to Complainant’s common law mark.

Both of Complainant’s registered trademarks are for watches and on its face, the domain name GENEVAWATCH.COM is confusingly similar to a registered trademark containing GENEVA, which is used for a WATCH.

Respondent’s intent to register a domain name which it knew was confusingly similar to Complainant’s marks is evidenced by Respondent’s offer to sell the disputed domain name for a substantial sum. This act of the adopter indicates that it expects confusion and resultant profit.

Respondent has no rights or legitimate interests in GENEVAWATCH.COM. Respondent has not made any use of the domain name in connection with any bona fide offering of goods or services. Respondent is not commonly known by the name GENEVA WATCH or by the “GENEVAWATCH.COM” domain name. Respondent has not independently established any trademark rights in the GENEVA WATCH trademark by use of the mark in any manner in commerce. Respondent has not filed any trademark applications to register the GENEVA WATCH trademark in the Untied States based on actual use or intent to use the mark in commerce. Respondent is not making any legitimate noncommercial or fair use of the domain name. Respondent’s sole purpose in registering the disputed domain name was to prevent Complainant from registering it so that Respondent could ransom it to Complainant.

Respondent registered and is using the disputed domain name in bad faith. Respondent’s offer to sell GENEVAWATCH.COM to Complainant for a substantial sum clearly establishes Respondent’s bad faith registration. This is corroborated by the fact that Respondent has not put the domain name to any other use.

B. Respondent:

The extent of Complainant’s trademark rights based upon its United States Trademark Registration No. 1567037 is for the mark “GQI GENEVA QUARTZ.” As is shown on Complainant’s Exhibit 4 to the Complaint, and as would be expected for common words or terms such as “geneva” and “quartz”, Complainant was compelled to disclaim rights to the term “GENEVA QUARTZ” apart from the mark applied for, namely GQI GENEVA QUARTZ. Also, Complainant’s trademark rights based on U.S. Trademark Registration No. 2403976 is for the composite mark consisting of the same textual string “GQI GENEVA QUARTZ” and a design element consisting of “shields and crests with letters, numerals or inscriptions”. Again, as shown in Complainant’s Exhibit 4 to the Complaint, Complainant was compelled to disclaim rights to the term “GENEVA” or “QUARTZ” apart from the mark GQI GENEVA QUARTZ. Respondent’s domain name “genevawatch” is clearly neither identical nor confusingly similar to the composite trademark GQI GEVEVA QUARTZ.

Complainant claims common-law rights to the mark “GENEVA WATCH” based upon its “extensive worldwide promotion and use of the mark for almost twenty years in connection with its GENEVA QUARTZ Watch and by virtue of its corporate name, Geneva Watch, Inc.” Even though Complainant’s rights in the GQI GENEVA QUARTZ mark has been properly limited by the Assistant Commissioner for Trademarks (commensurate with well-established trademark law pertaining to descriptive and generic terms incorporated into marks), Complainant is seeking to bootstrap essentially unlimited trademark rights in the mark GENEVA WATCH. If Complainant has established rights in this otherwise descriptive of generic term, then Complainant could seek and, indeed, would have sought federal trademark registration on the Principal under the Trademark Act, section 2(f) (descriptive mark acquiring distinctiveness with continuous use and substantial advertising expenditure, etc., over at least a period of five years) or on the Supplemental Register as a fall-back position.

A search of the records of federal trademark registrations or registration applications for the mark GENEVA WATCH shows that no hits were found in International Class 14. Under well-established trademark law, such registration is not possible on the basis of genericness. That is, a generic name or term such as “Geneva Watch” is incapable of performing a trademark function because it inherently cannot identify or distinguish products or services. Complainant has no rights, common law or otherwise, in the term GENEVA WATCH.

Respondent has rights and legitimate interests in the genevawatch.com domain name. Respondent established its fashion watch manufacture and distribution business via the Hong Kong entity Prince International (Far East) Company in 1988. Respondent has been marketing fashion watches under the GENEVA trade name. Although Respondent had not established a web site prior to receiving the Complaint, Respondent had made initial efforts to use the domain name in commerce. In that regard, Respondent had discussed with a customer using the customer’s Web designer based upon the customer having a strong Web presence.

In July 2000, Respondent filed an Assumed Name Certificate with the Texas Secretary of State to establish a corporate entity doing business under the Geneva Watches name. Based upon Respondent’s continuous manufacturing, marketing and sales of fashion watches from 1988 under either the trade name GENEVA WATCH and/or under the Texas business entity Geneva Watches, Respondent has demonstrated legitimate rights and interests in the domain name genevawatch.com.

Respondent did not register the disputed domain name in bad faith. Extenuating circumstances, subsequent to obtaining the domain name in February 2000 account for the inability to reasonably erect a commercially viable web site. Contemporaneously with obtaining the genevawatch.com domain registration, Respondent incorporated the entity Watch Factory, Inc. in Texas in February 2000. It was Respondent’s expectation that a United States office would be established and managed in Houston commensurate with the other family-managed offices in Canada and London. Efforts were also taken to arrange for an office lease in Houston. The affidavit of Ricky Budhwani states that at no time did he voluntarily approach Complainant for the purpose of selling the disputed domain name nor did he at any time intend to sell it to Complainant or anyone else.

 

FINDINGS

 

The undersigned finds as follows:

1 – The disputed domain name is not identical nor confusingly similar to Complainant’s registered trademark GQI GENEVA QUARTZ.

2 – The Respondent has demonstrated legitimate rights and interests in the disputed domain name.

3 – The domain name was not registered in bad faith.

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Respondent contends that as part of Complainant’s GQI GENEVA QUARTZ trademark registration, Complainant was required to disclaim rights to GENEVA and QUARTZ as they are generic, and therefore Complainant only has rights in the GQI for purposes of analysis of confusing similarity of the disputed domain name. This panelist finds that the Complainant did, in fact, disclaim any rights in the generic names GENEVA and QUARTZ as a part of its trademark registration of GQI GENEVA WATCH. Having done so, the Complainant now attempts to claim trademark rights in generic words to which it has no rights.

Respondent also contends that Complainant is incapable of establishing common law rights in the generic GENEVA WATCH mark, as it is not able to establish secondary meaning in such a combination of generic words. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights); see also Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).

 

Rights or Legitimate Interests

 

Respondent contends that it “made [an] initial effort to use the domain name in commerce,” thus establishing it in connection with a bona fide offer of goods. See Etax Corp. v. Dr. Van R. Whiting, AF-0369 (eResolution Oct. 15, 2000) (finding rights and legitimate interests where the Respondent consulted extensively with his business partner, incorporated a company, and contacted a web designer).

Respondent has demonstrated that contemporaneously with registration of the disputed domain name, he incorporated the entity Watch Factory, Inc., both of which occurred in February 2000. The evidence also indicates that Respondent has been engaged in the business of manufacturing and selling watches since 1988.

Respondent also contends that it is commonly known by the disputed domain name, as it “followed legal protocol in July 2000 for establishing a corporate entity doing business under the Geneva Watches name.” See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).

 

Registration and Use in Bad Faith

 

Respondent contends that the disputed domain name was not registered in bad faith, as required under Policy ¶ 4(a)(iii), because at the time of registration, Respondent had the intention of establishing a branch office in the United States. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the Respondent did not register or use the domain name <metagen.com> in bad faith where Respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).

Complainant has stated that Respondent offered to sell the disputed domain name for a substantial sum but the amount is not stated. This is not sufficient evidence that Respondent attempted to obtain a valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name. Also, there is no evidence to support a finding that Respondent registered the domain name to prevent Complainant from registering the mark in a corresponding domain name; that it was registered primarily for the purpose of disrupting the business of a competitor; or that by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Complainant’s mark.

In Complainant’s Additional Submission, Complainant questions the creditability of Respondent’s affiants and suggests that those affiants are being untrue in their statements. Complainant also points out certain ties that those affiants have to Respondent. It should be noted that presentation of this case on documentary evidence does not afford the arbitrator an opportunity to observe, hear and determine the creditability of affiants.

 

DECISION

 

Complainant’s request that the domain name GENEVAWATCH.COM be transferred is denied.

 

 

Daniel B. Banks, Jr., Panelist

Dated: July 19, 2000