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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aloha Pools Pty Ltd. v. Palatial Pools & Spas Pty Ltd

Case No. DAU2014-0033

1. The Parties

The Complainant is Aloha Pools Pty Ltd of Carrum Downs, Victoria, Australia, represented by Wadeson, Australia.

The Respondent is Palatial Pools & Spas Pty Ltd of Baulkham Hills, New South Wales, Australia.

2. The Domain Name and Registrar

The disputed domain name <alohapoolsandspas.com.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2014. On October 9, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On October 13, 2014, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 proceeding commenced on October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2014. In response to the notification of default, the Respondent sent numerous emails to the Center. The Complainant submitted a suspension request. The proceeding was suspended on November 21, 2014 and reinstated on December 2, 2014, at the Complainant’s request.

The Center appointed Andrew F. Christie as the sole panelist in this matter on December 11, 2014. 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 Complainant, or its predecessor in business, has used the trademark ALOHA POOLS since 1976 in respect of swimming pool and spa design, construction and installation services in Australia. The Complainant employs directly, or as regular sub-contractors, the full time equivalent of 59 people, has an average annual turnover of AUD 8 million, and spends on average AUD 100,000 per year on marketing activities. It builds more than 100 luxury pools per year across Australia, and has won numerous awards including Swimming Pool and Spa Alliance and Global AquaTekture Visionary Awards.

The Complainant owns Australian trademark registrations for ALOHA POOLS, the earliest of which dates from March 1, 2011. It is the registrant of the domain name <alohapools.com.au>, which its predecessor in business first registered on September 6, 2004.

The Respondent was incorporated in Australia on June 2, 2011. It registered the Australian business name “aloha pools and spas” on August 5, 2012, and the Australian business name “Palm Pools and Spas” on November 16, 2012.

The disputed domain name was registered on August 10, 2012. In response to discovering that the Respondent had registered the disputed domain name, the Complainant sent a cease-and-desist letter to the Respondent on October 18, 2012. On November 7, 2012, the Complainant sent a letter to the Respondent detailing an alleged agreement reached on the telephone in a conversation between the General Manager of the Complainant and Mr. Awadallah, who purported to be in charge of the Respondent. It would appear that the terms of that agreement were not complied with by the Respondent, and further correspondence from the Complainant did not elicit a response from the Respondent.

The Complainant has provided screenshots of the website to which the disputed domain name resolved on July 1, 2014, being a website advertising swimming pool construction. Following the Complainant’s cease-and-desist letter to the Respondent, the Respondent failed to take down the website resolving from the disputed domain name (as allegedly agreed to in the telephone conversation). Instead, on or before September 8, 2014, the Respondent redirected the disputed domain name to the homepage of the Respondent’s website at “www.palmpoolsandspas.com.au”. At the date of this decision, it appears that the disputed domain name does not resolve to a website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical and confusingly similar to the domain name <alohapools.com.au> and with the name and trademark ALOHA POOLS. The words “pools” and “pools and spas” are descriptive of the services and/or goods provided by the Complainant, whilst the common distinctive element of these words is ALOHA.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the Respondent is not authorized, and the Complainant has not granted a license to it, to use the disputed domain name or the trademark ALOHA POOLS; (ii) the Respondent has not made bona fide use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with the offering of goods or services; (iii) when the Respondent registered the Australian business name “aloha pools and spas” on August 5, 2012, it knew or was likely to have known of the Complainant’s Australian business including its swimming pool and spa design, construction and installation services sold under the ALOHA POOLS trademark, due to the Complainant’s substantial reputation over forty years and the ability of easily identifying the Complainant’s website, trademark registration and company and business name; (iv) a representative of the Respondent, Mr. Awadallah, admitted in a telephone conversation with the Managing Director of the Complainant that the Respondent had no rights or legitimate interests in ALOHA POOLS, and then registered the domain name <palmpoolsandspas.com.au> on November 7, 2012, and subsequently diverted the disputed domain name to the homepage of the website located at its new domain name; (v) the Respondent does not own any Australian trademark applications or registrations for ALOHA or ALOHA POOLS; (vi) the registration of the disputed domain name itself constitutes passing off and misleading and deceptive conduct under the Australian consumer law, being a misrepresentation that the Respondent has a right to use the name “Aloha” in respect of pools and spas; (vii) the Respondent is not commonly known by the disputed domain name; and (viii) the disputed domain name is not in use for noncommercial or fair use purposes, as it is being used to misleadingly divert consumers and to promote the Respondent’s activities with the intent for commercial gain.

The Complainant contends that the disputed domain name was registered or is subsequently being used in bad faith because: (i) by registering and using the disputed domain name, the Respondent has disrupted the business activities of the Complainant; and (ii) the Respondent intentionally attempted to attract for commercial gain Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s name or trademark as to the source, sponsorship, affiliation or endorsement of that website or location, or of a product or service on that website or location.

B. Respondent

The Respondent did not submit a formal response. However, the Respondent transmitted an email to the Center on December 2, 2014, stating “we have a settlement agreement and have complied with that agreement”. Reference to a settlement agreement was also made in a letter from the Respondent’s legal representative to the Complainant’s legal representative on December 5, 2014.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates the whole of the Complainant’s registered trademark ALOHA POOLS, and adds the string “andspas” together with the second-level extension of “.com” and the country code Top-Level Domain (“ccTLD”) identifier “.au”. The Panel considers that a typical Internet user would most likely read the text string “andspas” as being the words “and” and “spas”. The addition of the conjunctive word “and” and the descriptive plural word “spas” (which describes a product closely related to the word “pools”) does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ALOHA POOLS registered trademark. It is true that the Respondent has registered “aloha pools and spas” as an Australian business name. However, as paragraph 2.3 of the auDA Overview of Panel Views on Selected auDRP Questions, First Edition (“auDRP Overview 1.0”) explains, the fact that a respondent has registered a business name does not, of itself, establish that the respondent has rights or legitimate interests in the domain name that corresponds to the business name. The reason for this is that the registration of a business name does not provide proprietary rights in the name; rather, the registration of a business name is a legislative requirement that needs to be satisfied where an entity trades under a name that is not its own personal name or company name. The critical issue for the purposes of determining whether a respondent has rights or legitimate interests in a domain name that corresponds to a registered business name is whether the respondent has traded under that business name in good faith.

The evidence provided by the Complainant shows that the disputed domain name has been used to resolve to the homepage of the Respondent’s website at “www.palmpoolsandspas.com.au”. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Furthermore, the Respondent has not provided any evidence that it has been commonly known by the disputed domain name or that it has, for any other reason, rights or legitimate interests in the disputed domain name.

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered or Subsequently Used in Bad Faith

It is clear from the evidence in the case record that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to its website. Given the Panel’s conclusions, above, that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Respondent has no rights or legitimate interests in the disputed domain name, it follows that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that website. According to paragraph 4(b)(iv) of the Policy, this is evidence of bad faith.

For all of the above reasons, this Panel is satisfied that the disputed domain name has been used in bad faith.

D. Complainant’s Eligibility

The Complainant has requested transfer of the disputed domain name. Given that the Complainant is an Australian registered company, the Complainant owns an Australian registered trademark that is incorporated in the disputed domain name, and the disputed domain name incorporates words that are closely and substantially connected to the products and services provided by the Complainant, it appears that the Complainant satisfies the eligibility requirements for registration of the disputed domain name, subject to the discretion of the registry authority.

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 name <alohapoolsandspas.com.au> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: December 31, 2014

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