WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hayward Industries, Inc. and H-Tech, Inc. v. Nick M., Watch My Domain

Case No. D2006-0173

 

1. The Parties

The Complainants are Hayward Industries, Inc., New Jersey, United States of America, and H-Tech, Inc., Wilmington, Delaware, United States of America, represented by McCarter & English, LLP, United States of America.

The Respondent is Nick M., Watch My Domain, Mumbai, Maharashtra, India.

 

2. The Domain Names and Registrar

The disputed domain names <haywardfilter.com> and <haywardpump.com> are registered with Lead Networks Domains Pvt. Ltd., (“Lead Networks”) of India.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2006. On February 8, 2006, the Center transmitted by email to Lead Networks a request for registrar verification in connection with the domain names at issue. On February 10, 2006, Lead Networks transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, and administrative, technical and billing contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 16, 2006. 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 February 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2006. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 10, 2006.

The Center appointed Roberto Bianchi as the Sole Panelist in this matter on March 14, 2006. 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

The Panel accepts as true the following facts, alleged and evidenced by the Complainants, and not contested by the Respondent:

According to the certificate of registration No. 1,058,211 of February 8, 1977, issued by the United States Patent Office, Hayward Manufacturing Co., Inc. (New Jersey corporation) registered the HAYWARD trademark in, inter alia, international class 7 for pumps and water circulating systems for swimming pools, and for plumbing fixtures, filters, strainers and electrical lights, components, and fittings therefore for swimming pools in international class 11. This registration has been assigned to H-Tech, a wholly owned subsidiary of Complainant Hayward Industries. H-Tech is one of the Complainants in this proceeding.

On December 28, 2005, Complainants’ counsel Mr. Christie sent the Respondent two letters by registered mail demanding that he cease and desist from further using, and to transfer ownership of, the disputed domain names. The same texts were also sent by email. On January 9, 2006, Respondent replied by email, asking Mr. Christie how all the provisions were applicable to him, but without stating whether it was his intention to transfer ownership of the domain names. In an email of January 10, 2006, Respondent informed Mr. Christie that he had consulted an attorney, and that as he was not an United States citizen “the same cannot be enforced on upon” him. He also suggested Complainants “to consult some bigger attorneys to try and enforce whatever you’ll have mentioned”.

The Respondent registered the <haywardfilter.com> and <haywardpump.com> domain names on June 8, 2002.

 

5. Parties’ Contentions

A. Complainant

The Complainants contend the following:

- Each of the disputed domain names co-opts the HAYWARD mark in its totality, pars that mark with Hayward’s primary product lines covered by the trademark registration, and adds the gTLD “.com”. There can be no dispute as to the identity between the domain names in issue and the HAYWARD mark. Respondent has even been successful in creating actual confusion amongst professionals in the same industry as to the identity between the domain names and the HAYWARD mark.

- Respondent has no rights or legitimate interests in respect of the domain names. There is no evidence of Respondent’s use of, or demonstrable preparation to use, the domain names or a name corresponding to them in connection with a bona fide offering of goods and services. Respondent has not been commonly known by the domain names. Rather, he hides behind the pseudonym “Nick M.”. Respondent is not making a legitimate non-commercial or fair use of the domain names without intent for commercial gain to divert consumers or to tarnish the Complainant’s mark.

- Respondent’s deliberate provision of false registry information coupled with his attempt to conceal his true identity when registering the domain names given the strength and reputation of the HAYWARD mark is sufficient to demonstrate bad faith intent. Uninterruptedly until the present Respondent has attempted to use the domain names for his financial gain. He listed the domain names for sale on the website “www.searechb.com” in October 2002, and as late as June 2004. While awaiting an interested purchaser for the domain names Respondent parked the domain names at first “roar.com” and subsequently at “fabulous.com”, where click-through revenue is provided for domain name holders that “park” their domain names, turning them into a platform to re-direct Internet users to the web-sites of paying sponsors. The current version of the “www.haywardpump.com” website provides a sponsored link to the “www.poolsupply4less.com” website, where Hayward swimming pool pumps are offered alongside swimming pool pumps of Complainant’s competitors. Respondent’s use of the domain names seems calculated to falsely suggest that Hayward is affiliated with the websites under the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainants’ contentions, and is in default.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

As seen at section 4 above, the Complainants have rights in the HAYWARD mark, pre-dating the domain name registrations. The domain names at issue fully incorporate such mark, adding as suffixes the terms “pump” and “filter” (two products protected by the mark) respectively. These suffixes reinforce the association of the HAYWARD mark with such products. See Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275, relating to the <catmachines.com> domain name, finding that “[t]he registered CATERPILLAR and CAT trademarks are presumed to be valid, and the addition of the word ‘machines’ as a suffix to the word ‘cat’ in the domain name under consideration does not serve to distinguish the domain name from the trademark CAT, but rather would reinforce the association of the Complainant’s trademark with its primary line of products”. See also Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530, where the <athlonchip.com> domain name was found to be confusingly similar to the ATHLON mark (“[t]he inclusion of the word ‘“chip”’ with the ATHLON mark in the domain name confirms the confusing similarity of the domain name to Complainant’s rights, because ‘“chip”’ describes the products offered by Complainant under the ATHLON mark. Domain names that include a descriptive term with another’s trademark have been held confusingly similar. See, e.g., AT&T Corp. v. WorldclassMedia.com, Case No. D2000-0553 (WIPO July 28, 2000)”.

The Panel concludes that the domain names in dispute are confusingly similar to the Complainant’s HAYWARD trademark.

B. Rights or Legitimate Interests

It is a consensus view among URDP panels that once a complainant has made out an initial prima facie case that the respondent lacks rights or legitimate interests in respect of a disputed domain name, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions at “http://www.wipo.int/amc/en/domains/search/overview/index.html#21.

In the present case the Complainants contend that they have not authorized the Respondent to register or to use the disputed domain names, that he is not known by the domain names, that he has not used or prepared to use the domain names in connection with a bona fide offering of goods and services, and that he has not made a non-commercial or fair use of the domain names. The Complainants have also submitted evidence of the bad faith use of the domain names by the Respondent. See “C” below.

In sum, the Complainants have made out an initial prima facie case that the Respondent lacks rights or legitimate interests in the domain names. For his part, the Respondent did not reply to these contentions, either in his emails in reply to the cease-and-desist letters or in the present proceeding. Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the domain name. See Cervecería Polar Los Cortijos, C.A. v. Ronald Rivas Montes de Oca, WIPO Case No. D2003-0566.

C. Registered and Used in Bad Faith

The domain names fully incorporate the HAYWARD mark, and add the words “filter” and “pump” respectively – naming two products specifically covered by the mark. Thus, it is highly likely that Respondent knew of the HAYWARD mark when he registered the domain names.

Even if the Respondent seemingly never offered the Complainants the domain names for sale, he did list the domain names for sale at the “www.searchb.com” website between 2002 and 2004. The Complainants submitted evidence that Respondent’s use of the domain names consisted of having “parked” them first at “roar.com” and then at “fabulous.com”. At least in 2005 the domain names were also for sale at the “fabulous.com” web “parking” site. Annexes 11 and 12 to the Complaint. From these facts the Panel infers that the Respondent registered the domain names primarily for the purpose of selling the domain name registrations to the Complainants or to a competitor of the Complainants, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain names, which is evidence of bad faith registration pursuant to Policy, paragraph 4(b)(i).

As to the use of the domain names by “parking” them at a “parking” website, in the agreement of “Domain Name Traffic Manager Services” rendered by <fabulous.com> to a domain name owner, the consequences of “parking a domain name” are explained as follows:

“2.1. Fabulous.com hereby agrees to provide the following services to the Domain Name Owner (‘the Services’): […]

(b) Redirecting the Internet traffic from the Domains (‘Domain Traffic Redirection Service’) to the websites of third parties who have an existing commercial arrangement with Fabulous.com to purchase domain name traffic (‘Fabulous Advertisers’) or to the websites of third parties other than Fabulous Advertisers (‘Independent Websites’).

(c) The tracking, reporting and payment of revenue earned by the Domain Name Owner as a result of using the Domain Traffic Redirection Service;”1

According to the printouts of the web pages from “fabulous.com” (Annex 11 to the Complainant) at the “www.haywardpump.com” website of the Respondent there is a sponsored link to the “www.poolsupply4less.com” website. In the web page resulting from a connection to this site swimming pool pumps from Hayward as well as from its competitors (Jandy, Letro, Pentair, Polaris, Sta-Rite, Jacuzzi, etc.) are offered. The same applies mutatis mutandis to Respondent’s “www.haywardfilter.com” website traffic is diverted to the ”www.poolfilters.com” website. In both cases the HAYWARD mark (plus the names of goods protected by it) is being used as a lure to divert Internet traffic to, inter alia, competitors of the Complainants.

By “parking” the disputed domain names after having agreed to the policies of the “parking” sites, Respondent presumably generated click-through revenue at the expense of the Complainants. The Respondent attracted, for commercial gain, Internet users to his websites or other on-line location the websites of competitors of the Complainants by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. This is evidence of bad faith registration and use under Policy, paragraph 4(b)(iv). See eBay, Inc v. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (finding bad faith where the respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to the respondent’s site); see also Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

Even in absence of an intention to generate income through advertising or to otherwise participate in the revenues of Complainant’s competitors, bad faith under Policy, paragraph 4(b)(iv) would also exist when a respondent diverts business intended for the Complainant to Complainant’s competitors, by inserting sponsored links such as those appearing on the “www.haywardpump.com” and “www.haywardfilter.com” websites. If the Respondent aimed at depriving Complainants of selling HAYWARD pumps and filters, or at disturbing Complainants’ operations, that also would be evidence of bad faith registration and use under the general provision of Policy, paragraph 4(a)(iii)..

For all this, the Panel concludes that the Respondent has registered and is using the domain names in bad faith. In respect of the <haywardfilter.com> domain name this conclusion is further supported by the fact that Respondent caused actual confusion in at least one Internet user (knowledgeable with swimming pool filters), who was led to believe that the HAYWARD mark was affiliated with the “www.haywardfilter.com” website. Annex 7 to the Complaint.

 

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 names <haywardfilter.com> and <haywardpump.com> be transferred to the Complainants.


Roberto Bianchi
Sole Panelist

Dated: March 28, 2006


1 See “https://secure.fabulous.com/signup.htm?formcode[event]=signupmenu&formdata[accounttype]=wholesale#”