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Luxury watchmaker Rolex has targeted an online watch-tracking service in a trademark complaint filed at the US District Court for the Southern District of New York on Thursday, November 29.
“These claims are based upon the defendants' unauthorised use of Rolex's federally registered trademarks in association with defendants' domain name, e-commerce website and alleged watch-tracking services, offered through www.rolextracker.com,” Rolex said.
Rolex owns a number of trademarks, including ‘Rolex’ (101,819, registered in 1915) for watches, clocks, and cases, as well as marks featuring a crown and the words ‘Crown Device’, registered for timepieces (657,756) and retail store services related to watches, clocks, and jewellery (4,458,524).
On the accused platform, consumers are invited to register their Rolex’s serial number for $19.99 in order to protect the watch from loss of theft.
However, Rolex said that it has no control over the nature and quality of these services offered, and the watch-tracking service appears to be similar to Rolex’s own legitimate programme for stolen watches.
Rolex operates a “proprietary database” in which it records any activities, such as sale, loss, or insurance claim, related to one of its products. As part of the service, when a product is stolen but later brought to Rolex for repairs, the company retains the watch until the issue of ownership is resolved.
Rolex said that consumers “rely upon and value the service Rolex offers through its stolen watch programme”.
“Consumers familiar with Rolex's stolen watch programme are likely to be confused by the alleged watch-tracking service defendants offer,” Rolex said.
The watchmaker accused individual Jose Gallarreta, his business www.rolextracker.com, and a number of John Does of trademark infringement, trademark dilution, cybersquatting, and unfair competition.
The John Does are believed to be associated with Gallarreta, and “materially contribute” to the infringement of Rolex’s IP rights, the suit said.
Gallarreta’s disputed website “prominently displays” the ‘Rolex’ and ‘Crown Device’ marks on each web page and in its domain name, Rolex said.
The watchmaker alleged that the site uses the Rolex name and trademarks to drive internet traffic to the site, and that Gallarreta employs SEO strategies based on the marks.
“By using one or more of the Rolex registered trademarks in the domain name and on each website page, defendants are trading on Rolex's goodwill and reputation and creating the false impression that defendants are affiliated with Rolex,” the complaint said.
The watch maker added that the defendants are depriving the watchmaker of its right to fairly compete for space within each search engine, and causing an overall degradation of the value of goodwill associated with the Rolex marks.
Rolex asked the court for injunctive relief, triple damages, profits, compensatory damages, statutory damages, and attorneys’ fees.
Rolex, trademark infringement, trademark dilution, cybersquatting, unfair competition, watch, e-commerce, domain name misuse, likelihood of confusion