World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Culligan International Company v. Kqwssa LLC / Domains By Proxy, LLC

Case No. D2012-2409

1. The Parties

Complainant is Culligan International Company, of Rosemont, Illinois, United States of America, represented by SNR Denton US LLP, United States of America.

Respondent is Kqwssa LLC, of San Antonio, Texas, United States of America and Domains By Proxy, LLC, of Scottsdale, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <culligansanantonio.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 7, 2012. On December 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.

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 December 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 3, 2013.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on January 14, 2013. 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

Complainant, Culligan International Company, operates a water treatment solutions business through a global network of more than 800 dealers in over 90 countries. Complainant owns registrations in the United States of America and in at least 70 other jurisdictions for the CULLIGAN mark, as used on or in connection with water filtration and treatment goods and services. Complaint, Annex D. Complainant has used the CULLIGAN mark since at least as early as 1938.

Complainant operates its business in San Antonio, Texas, through a franchisee, under the name “Culligan of San Antonio.” Complainant’s San Antonio franchisee owns the domain name <culligansw.com>. Complainant owns the domain name <culligan.com>.

The disputed domain name, <culligansanantonio.com>, was registered on August 28, 2008. Upon arrival at the website at the disputed domain name, users are redirected to the site ‘’www.kineticosa.com’’, at which Kinetico water systems that are competitive with those offered by Complainant are sold. Complaint, Annex F.

5. Parties’ Contentions

A. Complainant

Complainant alleges that the disputed domain name is identical or confusingly similar to its CULLIGAN mark. It notes that the disputed domain name incorporates the entirety of the CULLIGAN mark, followed by the geographic location of one of its operations. According to Complainant, “[a] domain name that incorporates a geographic description with a registered mark can be considered identical or confusing similar to the complainant’s rights for the purpose of the Policy.”

Complainant maintains that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant explains that Respondent is not, or has it ever been, a licensee or business associate of Complainant or of any of its affiliates, nor is it otherwise authorized by Complainant to use its CULLIGAN mark. To Complainant’s knowledge and belief, Respondent is not known by the disputed domain name and is not making any legitimate noncommercial or fair use of the disputed domain name. “Respondent instead improperly trades upon the substantial goodwill associated with the CULLIGAN Mark by using the Domain Name for the purpose of attracting Internet users to a competitors’ website.” Such actions, Complainant asserts, do not constitute a bona fide offering of goods or services under the Policy.

With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent, by registering the disputed domain name more than 59 years after registration of the CULLIGAN mark and 70 years after Complainant began using the CULLIGAN mark, “has exhibited an intent to misappropriate the value of the widely-known CULLIGAN Mark, which is indicative of bad faith registration of the Domain Name.” Complainant further argues that Respondent should have been aware of the CULLIGAN mark and that “[s]uch awareness creates a legal presumption of bad faith.”

The only purpose of Respondent’s <culligansanantonio.com> domain name, Complainant asserts, is to misdirect internet users who are looking for Complainant’s websites to a competitor’s website at <kineticosa.com> for Respondent’s improper benefit. Upon information and belief, Complainant alleges that the website at<kineticosa.com> is operated by Kinetico Water Softeners, Complainant’s competitor in the water treatment field in the San Antonio market.

According to Complainant, Respondent registered and uses the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to the website of a competitor by creating a likelihood of confusion with Complainant’s CULLIGAN mark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the CULLIGAN trademark. As noted by Complainant, the disputed domain name incorporates the CULLIGAN mark in its entirety. The addition to the disputed domain name of the geographically descriptive designation “sanantonio” does not dispel the confusing similarity between the CULLIGAN mark and the <culligansanantonio.com> domain name.

The evidence further establishes that Complainant, though it trademark registrations covering, and long use of, the CULLIGAN mark, has rights in the mark.

B. Rights or Legitimate Interests

The Panel concludes that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that the disputed domain name resolves to a site maintained by a competitor of Complainant, from which one can purpose the same goods or services offered by Complainant under its CULLIGAN mark. There is no evidence that Respondent is commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the domain name.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith. As determined above, the disputed domain name <culligansanantonio.com> is confusingly similar to the CULLIGAN mark. The evidence also indicates that, upon arriving at the “www.culligansanantonio.com” site, users are redirected to a site operated by Complainant’s competitor in San Antonio, Texas. Thus, the Panel concludes that Respondent, has registered the disputed domain name, primarily for the purpose of disrupting the business of a competitor, within the meaning of paragraph 4(b)(iii) of the Policy. The Panel also finds that paragraph 4(b)(iv) applies in this case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <culligansanantonio.com> be transferred to the Complainant.

Jeffrey M. Samuels
Sole Panelist
Date: January 14, 2013

 

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