WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jacuzzi, Inc. v. Jacuzzi Unit Trust
Case No. DAU2005-0002
1. The Parties
The Complainant is Jacuzzi, Inc., Dallas, Texas, United States of America, represented by Donahue Gallagher Woods LLP, United States of America.
The Respondent is Jacuzzi Unit Trust, Patterson Lakes and/or Hallam, Australia, represented by Minter Ellison, Australia.
2. The Domain Name and Registrar
The disputed domain name <jacuzzi.com.au> is registered with Aust Domains International Pty Ltd.
3. Procedural History
The domain name the subject of this Complaint was originally included in a complaint relating to the domain names <jacuzzispas.com.au> and <jacuzzi.net.au>, which was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2005, and which ultimately became WIPO Case No. DAU2005-0001.
As the persons who are identified as the registrants of the respective domain names are different, auDA – the policy authority and industry self-regulatory body for the .au domain space – informed the Center that, under a specific interpretation of the .au Dispute Resolution Policy (the “auDRP Policy”), the complaints in relation to each domain name should be brought as separate complaints. The background to this matter is discussed in the Panel’s decision on Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001.
This Complaint was subsequently filed with the Center on June 8, 2005. On June 9, 2005, the Center transmitted by email to Aust Domains International Pty Ltd a request for registrar verification in connection with the domain name at issue. On June 10, 2005, Aust Domains International Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and that the contact details for the administrative, billing, and technical contact are as set out in the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the auDRP Policy, the Rules for .au Dispute Resolution Policy (the “auDRP 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 June 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2005.
A joint response in relation to <jacuzzispas.com.au> and <jacuzzi.net.au> was filed on that date. The response did not address the Complaint in relation to <jacuzzi.com.au> and the Center duly issued a Notification of Respondent Default on July 5, 2005. Subsequently, the solicitors who had filed the response in relation to the other domain names on July 4, 2005, filed with the Center an Amended Response dealing with all three domain names on August 4, 2005.
The Center appointed Warwick A. Rothnie, Mary Padbury and Staniforth Ricketson as panelists in this matter on August 10, 2005. The Panel finds that it was properly constituted. Each member of 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.
On August 18, 2005, the Complainant submitted a Further Statement (with 2 exhibits) with a request that the Panel exercise its discretion, under auDRP Rules paragraph 12, to allow its inclusion in the record for this proceeding. The Respondent submitted a rebuttal, Response to the Complainant’s Further Statement, on August 19, 2005.
4. Factual Background
Jacuzzi Inc. and its affiliated companies operate as manufacturers and distributors of whirlpool baths and spa-related products. It claims to have been so engaged since 1968, when a Mr. Roy Jacuzzi invented the whirlpool bath. Jacuzzi Inc. claims that it, and its affiliated companies, carry on their business in numerous countries including the United States of America, Australia, Singapore, Canada, Italy, France, Germany, United Kingdom, Brazil and Chile. The Complainant alleges that it has worldwide sales in excess of (presumably) US$350 million in each of 2001 and 2002, $400 million in 2003 and $500 million in 2004.
The Amended Complaint states that Jacuzzi Inc. has registered the JACUZZI trademark, or variations thereof, in at least 83 different countries. In Australia, it has registered the following trade marks1:
JACUZZI WHIRLPOOL BATH (bubbles and spiral)
Whirlpool bath equipment being for therapeutic purposes in International class 10
Swimming pools and spas in class 19 … and all other goods in this class
Grilling apparatus and barbeques in class 11; bath tubs and bath fittings; bath installations in this class … and all other goods in this class
Bath equipment, being for therapeutic purposes … in class 10; … and all other goods included in this class
Pumps, inclusive of swimming pool pumps and water system pumps; swimming pool filters … and all other goods included in class 10
Services related to the operation of swimming pools, spas, saunas, gymnasiums … included in class 41
JACUZZI WHIRLPOOL BATH (words in an ellipse, bubbles, arabesque & curved stripe)
Apparatus and installations for heating, steaming, ventilating, water supply and sanity purposes, including whirlpool baths, tub baths … parts, fittings and accessories for the above mentioned goods not included in other classes
The Complainant has also registered numerous domain names including <jacuzzi.com>.
The Respondent’s trustee, Jacuzzi Pty Ltd, carries on business apparently on behalf of the Respondent selling spa baths, accessories and supplies from two stores in suburbs of Melbourne, Victoria, and via a website to which the domain name <jacuzzispas.com.au> resolves. It does not seem to be disputed that this business, including the website, is promoted by reference to a logo. Nor is it disputed that the products sold and offered for sale by Jacuzzi Pty Ltd are not products sourced from the Complainant or its affiliates, but are products of the Complainant’s competitors. The Respondent claims that it, or companies related to its directors, have been operating the store at Hallam under the name “Jacuzzi” since 1991. The second store, at Hoppers Crossing, was opened in October 2004. The Respondent registered the domain name shortly after that on October 29, 2004. Unlike <jacuzzispas.com.au>, the domain name resolves only to a “website coming soon” page.
It would appear from email communications between the Center, the Complainant and the person identified in the whois database as the administrative, billing and technical contact for the domain name (and who admits at least to being the bookkeeper hired by the Respondent) that the domain name is actively used for email communications at least to the sole director and shareholder of the registrant of the domain name <jacuzzispas.com.au>.
The Complainant, through its then solicitors, sent a letter of demand in July 1996, to the Respondent’s predecessor at the Hallam store alleging trade mark infringement, false, misleading or deceptive conduct contrary to the trade practices legislation and passing off. The director of the Respondent’s trustee asserts that the Complainant took no further action in relation to these allegations until a further letter of demand, in similar terms, was sent in November 2004 by the Complainant’s present solicitors.
After filing the original, “joint” complaint, the Complainant commenced Federal Court proceedings No VID316 of 2005 on April 7, 2005, against a number of parties, including the Respondent’s trustee company, its director and other associated persons. These proceedings allege that the respondents (including the Respondent’s trustee company) have infringed the Complainant’s registered trade marks, engaged in false, misleading or deceptive conduct contrary to the trade practices legislation and passing off. A Defence and Cross-claim in those proceedings was filed on June 15, 2005. The Defence denies infringement on the grounds that the Complainant’s registered trade marks, or the term Jacuzzi, is or has become descriptive. The Defence also denies that the Complainant has any reputation in Australia in the term Jacuzzi and further claims that the Complainant is estopped from bringing its action at this stage. The Cross-claim seeks cancellation or removal from the Trade Marks Register of the Complainant’s trade marks.
5. Discussion and Findings
Paragraph 15(a) of the auDRP Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted by the parties and in accordance with the auDRP Policy, the auDRP Rules and those principles of law that the Panel deems applicable.
The first issue the Panel must address is whether or not as requested by the Respondent the Amended Response should form part of the record, having been filed one month late.
The auDRP Policy does permit an extension of the period for filing a response in “exceptional circumstances”: auDRP Rules paragraph 5(d). In this connection, the Panel notes that proceedings under the auDRP Policy are meant to be an expeditious and a cheaper means of resolving the disputes covered by the auDRP. Accordingly, it is very important that the timetable laid down in the auDRP Policy and the auDRP Rules be adhered to. This makes it doubly important that a person seeking an exercise of a panel’s discretion to extend time, particularly after the event, make full and frank disclosure about why the deadline was not complied with in the first place.
After some hesitation on this matter, the Panel concludes that the time for filing the response should be extended and the Amended Response admitted. Following auDA’s direction when the original complaint was filed, there has been a number of communications between the Center, the Complainant and the various (proposed) respondents. The Response and the Amended Response were both prepared by the one experienced firm of solicitors, who have stated categorically that they did not receive either the Complaint (in this proceeding) or the notification of default until July 26, 2005 – it would appear as a result of correspondence between them and the Complainant’s lawyers. The Response was quite frank about the relationship of the respondent parties that it dealt with, as is the Amended Response. There were also negotiations in this period between the respective legal representatives in relation to the impact of the commencement of the Federal Court proceedings. The Panel also notes that, quite properly in the particular circumstances of this proceeding, the Complainant has not objected to the inclusion of the Amended Response.
Accordingly, the statements that the Panel takes into account for these purposes are the Amended Complaint and the Amended Response, both of which have a number of annexures and schedules. In addition, as noted above, the Complainant submitted a Further Statement on August 18, 2005, and requested its inclusion on the grounds that the Amended Response raised new issues and factual contentions that require clarification and refutation. The Respondent had also submitted its Response to the Further Statement before the Panel was aware of the Further Statement. The Panel has reviewed both statements. The Further Statement broadly seeks to address five issues:
(1) the Respondent’s request for termination or suspension of the proceeding;
(2) whether or not the Disputed Domain Name is identical or confusingly similar to any trade mark rights of the Complainant;
(3) whether or not there is a prima facie showing that the Respondent lacks rights or legitimate interests;
(4) whether or not the Respondent’s acts were done in bad faith; and
(5) the Complaint presents issues clearly within the scope of the auDRP Policy and readily determinable by the Panel.
Having reviewed both documents, the Panel shall refer to them as appropriate in its discussion below.
The second preliminary issue that the Panel must address is the Complainant’s request for all three proceedings to be consolidated. For the reasons more fully explained in the Panel’s decision in Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001, the Panel finds it appropriate to deal with each dispute separately.
The third preliminary issue for consideration is the Respondent’s request for this administrative proceeding to be terminated or suspended in light of the commencement of the Federal Court proceedings. Once again, for the reasons explained in the Panel’s decision in relation to Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001, that request is denied.
Under paragraph 4(a) of the auDRP Policy, therefore, the Complainant has the burden of proving the following three elements:
(i) The domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered or subsequently used in bad faith.
The Complainant bears the onus of proof of each of these factors. The Panel turns to consider them.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have rights in a name or trade mark and, if so, is the domain name identical or confusingly similar to those rights: see e.g. JupiterMedia Corporation and Australia.Internet.com Pty Ltd v. Spotpress Pty Ltd, WIPO Case No. DAU2003-0005 and, to similar effect, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.
For the reasons the Panel discusses more fully in Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001, the Complainant has demonstrated ownership at the very least of the registered trademarks in Australia referred to in section 4 above.
The second part of the inquiry at this first stage requires a comparison of the domain name to the trade mark rights of the Complainant that have been established, independently of questions about how (if at all) or in respect of what (if anything) the domain name is used. See e.g. GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001.
The domain name is not identical to the Complainant’s trade mark rights as the former includes “.com.au” appended as a suffix to the word Jacuzzi. Two of the Complainant’s trade marks also include device elements. The mere addition of such generic material as “.com.au”, however, cannot escape a finding of confusing similarity to the word marks or the composite marks involving both word and device elements. See e.g. Advanced Book Exchange Inc. v Argyle Emporium, WIPO Case No. DAU2003-0004; MGM Home Entertainment and ors .v McIlroy Group Management Pty Ltd, WIPO Case No. DAU2003-0006; Produits Berger v. Lay Tee Ong, WIPO Case No. DAU2004-0008.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark rights and the requirements of paragraph 4(a) of the auDRP Policy are satisfied.
B. Rights or Legitimate Interests
The second requirement that the Complainant must establish is that the Respondent has no rights or legitimate interests in respect of the domain name. In view of the difficulties in proving a negative, it is usually sufficient for the Complainant to advance facts giving rise to a prima facie case that the Respondent does not have the necessary rights or legitimate interests and then an evidential burden shifts to the Respondent to show the basis for a claim to rights or legitimate interests in the relevant sense: See e.g. GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001 and Produits Berger v. Lay Tee Ong, WIPO Case No. DAU2004-0008.
The facts and arguments relied on by each of the parties in this administrative proceeding are substantially the same as those advanced in connection with Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001. In particular, in view of the inter-relationship between the various respondents to the three proceedings (See, Jacuzzi, Inc. v. Jacuzzi Pty. Ltd., WIPO Case No. DAU2005-0003) and the Respondent’s nature as a trust which operates through the other entities, the Respondent’s claim to the benefit of the same three defences available to the respondent in Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001, is by no means untenable or implausible. Accordingly, in the very unusual circumstances of this case the Panel finds that the Complainant has not discharged its onus under this head for substantially the reasons explained in relation to Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001. The Panel finds, therefore, that on the record in this administrative proceeding the Complainant has been unable to prove that the Respondent has no rights or legitimate interests in the domain name.
As in Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001, the Panel emphasises that this finding is made solely on the record in this administrative proceeding. The matters claimed by the Respondent are possible defences that may be available to the Respondent. They are not easy defences to make out, however, and the Respondent may not be able to establish them. A proper assessment of them requires much wider evidence gathering powers, including discovery and cross-examination of witnesses, than is available in an administrative proceeding of this kind. In view of the limited nature of these administrative proceedings as proceedings on the papers, therefore, the Panel’s finding cannot, and should not, be taken as a final endorsement of the Respondent’s claims.
C. Registered and Used in Bad Faith
The third factor that must be established by the Complainant is somewhat different to the corresponding test under the UDRP in that the Complainant need show only either registration in bad faith or subsequent use in bad faith. That is, registration or use in bad faith are alternative, rather than cumulative, requirements as under the UDRP.
In view of the Panel’s conclusion in relation to the second factor above, it is unnecessary for the Panel to decide this issue.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: August 24, 2005