Complainant is Water Pik, Inc., of Fort Collins, Colorado, United States of America, represented by Dorsey & Whitney, LLP. of United States of America.
Respondent is OMNISOURCE D.D.S., L.L.C., c/o William Weissman, of North Hollywood, California, United States of America.
The disputed domain names <aqua-pik.com> and <aquapik.com> are registered with Register.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2008. On October 31, 2008, the Center transmitted by email to Register.com, Inc. a request for registrar verification in connection with the disputed domain names. On November 10, 2008, Register.com, Inc. transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 2, 2008.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on December 15, 2008. 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.
Complainant is the owner of numerous United States of America (“United States” or “U.S.”) trademark registrations for the mark WATER PIK and marks including the term WATERPIK for goods including toothbrushes, hygienic and therapeutic irrigation appliances, liquid-jet-emitting fixtures and powered toothbrush units, oral irrigators, oral healthcare products and professional dental products, among others. Complainant's earliest United States trademark registration issued on November 9, 1971.
In addition to its U.S. registrations, Complainant owns registrations and applications for the mark WATERPIK in over 30 countries. Complainant also owns registrations for the domain names <waterpik.com> and <waterpick.com>, which it has used since at least as early as 1998 to operate a website promoting its goods under the WATERPIK mark.
Respondent registered the disputed domain name <aquapik.com> on June 1, 2004 and the domain name <aqua-pik.com> on May 21, 2006.
Complainant contends that the disputed domain names are confusingly similar to Complainant's WATER PIK and WATERPIK marks, that Respondent has no legitimate rights or interests in the disputed domain names and that Respondent has registered and used the disputed domain names in bad faith.
Respondent did not reply to Complainant's contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of 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”.
Complainant has demonstrated that it owns rights in the trademarks WATER PIK and WATERPIK. A semantic similarity between a trademark and a domain name can exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation. Sociedad General de Aguas de Barcelona, S.A. v. Jose Manuel Soriano Garcia, WIPO Case No. D2007-1465 (finding confusing similarity between complainant's mark and domain name consisting of English translation of the mark). The word “aqua” in the disputed domain names is the literal Latin translation of the English word “water,” and has become well-known in the English language to define water, as demonstrated by its listing in several English dictionaries. Thus, the wording “aquapik” or “aqua-pik” is literal translated equivalents of Complainant's mark. See also Société pour l'Oeuvre et la Mémoire d'Antoine de Saint Exupéry – Succession Saint Exupéry – D'Agay v. Perlegos Properties, WIPO Case No. D2005-1085 (finding confusing similarity between <thelittleprince.com> and LE PETIT PRINCE trademark); Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408 (finding confusing similarity between Chinese transliteration of complainant's mark); Sociedad General de Aguas de Barcelona, S.A. v. Jose Manuel Soriano Garcia, WIPO Case No. D2007-1465 (finding confusing similarity between complainant's mark and domain name consisting of English translation of the mark).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant's trademarks.
Complainant's use of and registrations for the WATERPIK mark predate Respondent's registration of the disputed domain names by more than 40 years. Complainant's <waterpik.com> and <waterpick.com> domain names were also registered and in use prior to the date of Respondent's registration of the disputed domain names. The evidence indicates that Respondent's managing director, a dentist familiar with oral health products, was likely aware of Complainant's marks at the time Respondent registered the disputed domain names.
Respondent is not a franchisee, affiliated business or licensee of Complainant. Complainant has not authorized Respondent to register the disputed domain names or to otherwise use Complainant's marks.
Respondent is not and has not been commonly known by the disputed domain names. Respondent appears to be operating a sponsored link, pay-per-click website at each of the disputed domain names, from which Respondent derives revenue based on the number of times visitors click on links appearing on the websites. Such use of the domain names does not constitute a bona fide, legitimate commercial use of the domain names.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation or endorsement of respondent's website or location of a product or service on respondent's website or location.
Complainant submitted evidence indicating that Respondent likely had actual knowledge of Complainant's WATERPIK trademark prior to registering the disputed domain names. Respondent appears to be using the disputed domain names to operate sponsored link, pay-per-click websites from which it derives revenue through Internet advertising. Respondent has created online directories at the websites located at each of the domain names. Respondent's online directories include many listings that feature Complainant's WATERPIK mark and links to websites offering Complainant's WATERPIK-branded products for sale. The submitted evidence indicates that Respondent is trading off the goodwill associated with Complainant's WATERPIK mark and Internet traffic intended for Complainant's website. Such use evidences Respondent's bad faith.
The Panel finds that Respondent has registered and used the disputed domain names in bad faith.
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 <aqua-pik.com> and <aquapik.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Dated: January 6, 2009