The Complainant is Intex Recreation Corp. of Long Beach, California, United States of America, represented by Baker & Daniels of United States of America.
The Respondent is RBT, Inc., Ira Weinstein of Brooklyn, New York, United States of America, representing itself.
The disputed domain name <intexpool.com> (the “Domain Name”) is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2010. On January 27, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 28, 2010, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 22, 2010. The Response was filed with the Center on February 22, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 1, 2010. 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.
The Complainant and its affiliates manufacture and sell recreation products such as above-ground swimming pools, pool accessories, pool toys, and sporting goods. The Complainant states that it has been branding such products with the INTEX mark since July 1976. The Complainant has operated a website at “www.intexcorp.com” since October 1995.
The Complainant holds more than 118 INTEX trademark registrations in more than 50 countries, including United States of America trademark registrations numbers 1292262 (registered August 28, 1984), 1434612 (registered March 31, 1987), 1594101 (registered May 1, 1990), and 2563582 (registered April 23, 2002).
The Domain Name was registered on April 18, 1999. The Domain Name has resolved since at least early 2008 to a website with third-party advertising for swimming pool liners, filters, heaters, and related products that compete with products sold by the Complainant. Printouts furnished with the Complaint show that in January 2010 the website associated with the Domain Name advertised such products from multiple manufacturers. The website associated with the Domain Name now advertises only the products of one of the Complainant's competitors, Red's Pool and Patio Showcase.
In April 2008, counsel for the Complainant sent the Respondent a cease-and-desist letter concerning the Respondent's use of a similar domain name, <www.intexpools.com>. The Respondent transferred that domain name to the Complainant but did not disclose its ownership of the Domain Name at issue in this proceeding. The Complainant learned of the Domain Name in May 2008 and sent a new demand that the Respondent cease and desist from using the Domain Name and transfer the Domain Name to the Complainant. According to the Complainant, the Respondent has not replied to this demand or a subsequent demand in December 2009.
The Complainant asserts that the Domain Name is confusingly similar to the INTEX mark and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent has registered and used the Domain Name in bad faith, misleading consumers and presumably obtaining advertising revenues from the Complainant's competitors. The Complainant also points to the Respondent's conduct since receiving cease-and-desist letters as indicating bad faith.
The Respondent identifies itself as a reseller of INTEX pools and related products. The Respondent points to other INTEX reseller websites using domain names incorporating the INTEX mark, such as “www.intexspares.com.uk”, “www.intexpoolsupplies.com.au”, and “www.intex-pools.com”. The Respondent contends that the Complainant has not diligently “policed” its trademark over the past 40 years and said nothing until 2008 about the Respondent using two domain names incorporating the INTEX mark.
The Respondent reports that it used the Domain Name and the similar domain name <www.intexpools.com> since 1999 to sell INTEX swimming pools and after-market accessories. The Respondent states that the Complainant knowingly supplied INTEX pools and related products to the Respondent, attaching several representative invoices.
The Respondent does not deny advertising and selling other manufacturers' competing products through the same website associated with the Domain Name and a similar domain name, but the Respondent asserts that it did not act in bad faith and clearly identifies advertised products according to manufacturer. Citing a report from the Better Business Bureau in Los Angeles, California, the Respondent argues that the Complainant does not enjoy a good reputation for quality and that the Respondent has not compromised the “goodwill” associated with the INTEX mark.
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
It is undisputed that the Complainant holds registered INTEX marks. The Domain Name incorporates the Complainant's INTEX mark in its entirety, adding the generic word “pool”. The addition does not avoid confusing similarity, particularly since swimming pools and accessories are the Complainant's principal products.
The Panel finds that the Domain Name is confusingly similar to the Complainant's mark for purposes of the first element of the Complaint.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances establishing a Respondent's rights or legitimate interests in a domain name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”.
The Respondent implies that, because it was selling the Complainant's INTEX pools and pool accessories, it has a legitimate interest in using a Domain Name incorporating the Complainant's INTEX mark.
Numerous panel decisions under the Policy address the question of whether a reseller of branded goods is making a bona fide offering that should be viewed as conferring a “legitimate interest” in a domain name, where the trademark holder has not authorized the reseller to use the mark in a domain name. Although some panels have entirely rejected the legitimacy of a reseller's unauthorized use of a manufacturer's mark in a domain name, most decisions follow Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Oki Data panel concluded that a reseller using the manufacturer's mark in a domain name must actually offer goods or services associated with the mark, use the domain name to sell only goods or services associated with the mark, accurately disclose the reseller's relationship with the mark holder, and refrain from “cornering the market” on relevant domain names. This is characterized as the “majority view” in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Decision Overview”), at paragraph 2.3. The Panel finds this analysis consistent with the letter and the spirit of the Policy, and the Panel is of the opinion that it is incumbent upon UDRP panels to seek, where possible, to achieve consensus in the interpretation and application of the UDRP.
The Respondent here fails the Oki Data test. It is undisputed that the Respondent has, in the past, advertised and sold INTEX products through the website associated with the Domain Name, but the website currently advertises only the products of a competitor. From the available record, it does not appear that the Respondent's website has included a disclosure explaining the relationship between the Respondent and the Complainant. In any event, both the record and a perusal of the current website show that the Respondent has regularly used the Domain Name for a website prominently advertising and selling the products of the Complainant's direct competitors. The Respondent has no “legitimate” interest in making such use of the Complainant's mark.
The Panel concludes that the second element of the Complaint has been established.
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad faith registration and use, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent acknowledges that it was aware of the Complainant's mark and used the Domain Name incorporating the mark for a website that advertised and sold the Complainant's INTEX products as well as competing products. The mark is long-established, fanciful, and distinctive. It is unlikely that the Respondent selected the Domain Name for any reason other than to trade on the Complainant's reputation, attracting consumers aware of the Complainant's brand. The Respondent does not offer an alternative motivation in response to the Complainant's inference that the Domain Name targeted the Complainant's mark.
As discussed above, the Respondent has not established a legitimate, nominative fair use of the Complainant's mark in the Domain Name as a reseller of the Complainant's products. The Respondent argues that other resellers also use the INTEX mark in their domain names, but it is beyond the scope of this proceeding to determine whether such use by third parties is authorized or otherwise legitimate. The Respondent does not dispute the Complainant's assertion that the Complainant has never authorized the Respondent's use of the Domain Name for a website that sells competitors' products.
The Respondent argues that there was no intent to mislead consumers, because the content of the website associated with the Domain Name clearly identified products by manufacturer. But this does not change the fact that the Domain Name itself misleadingly suggests an affiliation with the Complainant and then leads the consumer to competing products sold by or through the Respondent. This abuse of the Complainant's trademark for commercial gain fits the illustration of bad faith in paragraph 4(b)(iv) of the Policy. The Respondent's assertion that the Complainant's mark has little “goodwill” associated with it is not persuasive: the Respondent itself chose to register two domain names based on that distinctive mark, selling INTEX-branded products as well as those of competitors.
The Respondent's conduct following the first cease-and-desist letter from the Complainant also supports an inference of bad faith. The Respondent transferred <intexpools.com> to the Complainant but did not disclose its possession of the nearly identical Domain Name <intexpool.com>. The Respondent subsequently failed even to respond to correspondence asserting that the Domain Name also infringed the Complainant's trademark. This apparent evasiveness and disregard for asserted trademark rights undercuts the Respondent's contention that it has acted only in good faith with respect to the Complainant and its mark.
The Panel concludes that the Domain Name was registered and used in bad faith within the meaning of the Policy.
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 Name <intexpool.com> be transferred to the Complainant.
W. Scott Blackmer
Dated: March 3, 2010