WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
River Pools & Spas Incorporated v. Viking Pools, LLC
Case No. D2010-0933
1. The Parties
The Complainant is River Pools & Spas Incorporated of Warsaw, Virginia, United States of America, represented by Gavin Law Office, PLC, United States of America.
The Respondent is Viking Pools, LLC of Jane Lew, West Virginia, United States of America, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America.
2. The Domain Names and Registrar
The disputed domain names <riverpools.net>, <riverpoolsva.com>, <riverpoolsva.net>, <riverpoolsvirginia.com>, and <riverpoolsvirginia.net> (the “Domain Names”) are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2010. On June 9, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Domain Names. On June 9, 2010, Network Solutions, LLC transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 11, 2010. 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” 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 June 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2010. In response to a joint request by the parties to extend the due date for Response, the due date for Response was extended until July 19, 2010. On July 18, 2010, the Complainant requested a suspension of the proceedings until August 2, 2010 while the parties discussed settlement options. The proceedings were suspended on July 19, 2010. On July 28, 2010, the Complainant requested reinstitution of the proceedings; the proceedings were reinstituted on July 30, 2010, with the due date for Response of August 4, 2010. The Response was filed with the Center on August 4, 2010, including a request that the Center suspend or terminate this proceeding because of a pending lawsuit in federal court.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 11, 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.
4. Factual Background
The Complainant, a Virginia business corporation, sells and installs fiberglass in-ground swimming pools and spas manufactured by others. The Complainant operates a website at “www.riverpoolsandspas.com”.
The Complainant asserts that it has used RIVER POOLS & SPAS as a service mark in connection with this business in Virginia since 2001 and in Maryland since 2007. In September 2009, the Complainant obtained state registrations for this mark in Virginia (No. 9410, September 11, 2009) and Maryland (No. 2009-0162, September 16, 2009).
Until May 2008, the Complainant sold swimming pools manufactured by the Respondent, a West Virginia limited liability company, as one of the Respondent’s authorized dealers. The parties both allude to some unidentified disagreement that ended this relationship. This evidently was not an amicable parting of the ways. One of the Complainant’s principals, Mr. Sheridan, subsequently published an e-book on how to buy a swimming pool. The book could be read as critical of at least some of the Respondent’s products. This prompted a disparaging e-review of that book written by the Respondent’s president, Mr. Stahl. In pending litigation, each party accuses the other of false advertising and efforts to mislead and even intimidate customers.
The Respondent registered the five Domain Names on March 25, 2009. The Domain Names do not currently resolve to active websites, but it is undisputed that the Domain Names formerly directed Internet users to websites operated by the Respondent in its own name or in the name of an affiliate or trade name, Composite Pools. The Respondent has apparently blocked access to archived versions of these websites on the Internet Archive’s Wayback Machine by using the robots.txt software application. However, the Complaint attaches several screen shots of the websites formerly associated with the Domain Names. Some of these web pages featured a photograph of a pool that, according to the caption, was “installed by River Pools & Spas”, heightening the impression that the website was associated with the Complainant. Other pages on the Respondent’s websites encouraged consumers to “get this pool direct from the manufacturer” and provided links to websites operated in the name of Viking, Composite Pools, and Crystal Palace Pools offering installation services in competition with the Complainant. The website associated with the Domain Name <riverpoolsvirginia.com> displayed an explicit promise to “beat any reasonable offer from River Pools and Spas in the state of Virginia.”
The Complainant sent cease-and-desist letters and ultimately sued the Respondent and other parties in federal court for trademark infringement and cybersquatting (the Respondent has filed counterclaims for defamation and false advertising). The Complainant also initiated this UDRP proceeding.
5. Parties’ Contentions
The Complainant asserts common-law and state-registered trademark rights in the service mark RIVER POOLS & SPAS and argues that all five Domain Names are confusingly similar to this mark. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names. The Respondent, according to the Complaint, registered and used the Domain Names in bad faith, attempting to create “initial interest confusion” to bring consumers to the Respondent’s websites and divert sales from the Complainant.
The Respondent argues that “river pools”, the term found in all five Domain Names, is a descriptive phrase and that the Complainant has not established a secondary meaning associated with its services. The Respondent alternatively contends that there is no likelihood of confusion with the Complainant’s weak, descriptive service mark.
The Respondent claims a legitimate interest in the term “river pools” because it is descriptive (referring to a type of swimming pool, a natural pool in a river, or a pool company located near a river) and nominative (the Respondent’s pools have indeed been installed by the Complainant River Pools & Spas in the past, but the Respondent explicitly advertises that it can install such pools for a lower price than the Complainant does).
Finally, the Respondent denies bad faith in the registration and use of the Domain Names and argues that the Complainant has not met its burden of proof on this issue. The Respondent says it has offered to transfer the Domain Names to the Complainant, but that the Complainant has imposed additional and unacceptable conditions. According to the Respondent, this merits a panel finding of attempted reverse domain name hijacking.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are 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.”
A. Request to Suspend or Terminate
The Respondent asks the Center to suspend or terminate this proceeding because substantially the same cybersquatting allegations are included in a judicial complaint filed by the Complainant against the Respondent and others, River Pools & Spas, Inc. v. Latham Int’l, Inc.,et al, Civ. No. 3:10cv251 (E.D. Va. Apr. 19, 2010). The complaint in that federal civil action, which is still pending, concerns four of the five Domain Names. The Complaint in the UDRP proceeding states that the Complainant later discovered the fifth Domain Name, <riverpoolsva.net>, and indicates that this Domain Name may be added to the judicial complaint. The Respondent argues that the UDRP proceeding is therefore unnecessary and results in additional costs and burdens for the Respondent.
Paragraph 18(a) of the Rules gives the Panel discretion to suspend or terminate the UDRP proceeding where, as here, the Domain Names are the subject of other legal proceedings:
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Under paragraph 18(a) of the Rules, the legal proceeding must be “in respect of a domain-name dispute”. That is partly the case here, where the judicial complaint includes claims under United States federal anticybersquatting legislation.
However, in the circumstances of this proceeding, the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Names, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation (see e.g., Policy, paragraph 4(k)).
A decision to deny the UDRP Complaint would obviously not prejudice the Respondent, nor would it bar the Complainant from continuing to seek judicial remedies. Conversely, the Respondent could suspend the effect of a UDRP transfer order by filing a judicial claim in the applicable jurisdiction within ten days (Policy, paragraph 4(k)). If they did not choose to do so, a UDRP transfer order might still have only a temporary effect, as the court in the pending federal litigation might ultimately rule against the Complainant. In the interim, the record suggests that a temporary loss of control over the Domain Names (if a transfer order were found by the Panel to be warranted under the Policy) would not be significantly prejudicial to the Respondent: the Domain Names do not currently resolve to websites, and the Respondent does not assert plans for immediately using the Domain Names in any way. On the other hand, if the UDRP proceeding resulted in a transfer order that was not subsequently overturned by a ruling in the federal litigation, the Complainant would have more expeditious relief as intended by the Policy. The Complainant could then make its own decision about continuing with the lengthier and more costly federal litigation that it initiated, as could the Respondent in relation to whether or not it wished to initiate its own lawsuit in an applicable jurisdiction, such as one contemplated by paragraph 4(k) of the Policy.
Therefore, the Panel exercises its discretion to proceed to a decision in this proceeding.
B. Identical or Confusingly Similar
The Complainant claims common-law rights in RIVER POOLS & SPAS as a service mark, as well as two state registrations of that service mark. As the Panel observed in Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105, citing the United States federal Seventh Circuit Court of Appeals in Mil-Mar Shoe Co., Inc. v. Shonac Corp., 75 F.3d 1153, 1161 & n.15 (7th Cir. 1996):
“it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. However, the burden on the party making a claim to distinctiveness or secondary meaning in such a case is high because of the disinclination of the courts to take words of ordinary meaning out of common usage.”
Thus, UDRP panels faced with claims based on descriptive marks asserted under state law have required evidence that the name has become a distinctive identifier associated with the complainant or its goods and services. Evidence of a protectable secondary meaning might include the length and amount of sales under the mark, the nature and extent of advertising, consumer surveys, and media recognition. See, e.g., Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083.
Such evidence is sparse in the current record, but it does appear that the Complainant has conducted advertising, sales, and service using this name for nine years in Virginia and for three years in Maryland. The Complainant registered the mark in both states in 2009.
In any event, the Respondent itself has behaved as though RIVER POOLS & SPAS has value as a service mark associated with the Complainant’s pool installation services. The Respondent was well aware of the Complainant, one of its authorized dealers for several years, and referred explicitly to “River Pools & Spas” pool installations on the websites associated with the Domain Names, even including photographs of “River Pools & Spas” installations. The Respondent’s principal also repeatedly referred to “River Pools” in his e-review of Mr. Sheridan’s e-book. The Respondent registered the five Domain Names incorporating the term “river pools” and used them for websites directly competing with, and expressly mentioning, the Complainant. These websites did not reflect any generic use of the names, such as advertising swimming pools with a “lazy river” design. The only sense in which they use “River Pools” is to refer to the Complainant’s competing services. Moreover, four of the five Domain Names include the name or abbreviation of the state of Virginia, where the Complainant is based. The Respondent’s websites specifically addressed consumers “in Virginia” who had obtained estimates from the Complainant, inviting them to submit those estimates so that the Respondent could better them. It seems clear that the Respondent chose the Domain Names for their value in attracting Virginia consumers familiar with the Complainant and its services, and not for any generic value of the names.
In sum, the Complainant’s mark may be weak, but the Respondent evidently valued it as a reference to the Complainant’s services, at least in a local market for pool installation services. This suggests to the Panel that the name had acquired secondary meaning in that market.
Each of the Domain Names incorporates distinctive elements of the Complainant’s mark (“river pools”) and four of them add to the likelihood of confusion by including an apparent reference to the state of Virginia, where the Complainant is located. The Domain Names are sufficiently similar to the Complainant’s mark in appearance, sound, and sense that the Panel finds them confusingly similar for purposes of the first element of the Complaint.
C. Rights or Legitimate Interests
It is undisputed that the Complainant never authorized the Respondent to reflect the Complainant’s service mark in the Domain Names. The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names, 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent’s use of the Domain Names was commercial, but it is not be a legitimate, bona fide commercial use to mislead consumers as to source or affiliation (a confusion amplified by the Respondent’s display of photographs labeled “River Pools & Spas” pool installations). The Respondent claims a legitimate interest in the Domain Names for their generic value, but the Respondent did not use them in connection with any of the asserted generic senses. Its websites did not picture or describe for example pools in a natural river, swimming pool designs imitating a river, or a pool company located near a river. The websites were clearly, in some cases explicitly, targeted at potential customers of the Complainant’s pool installation services.
The Panel finds that the Complainant has made a prima facie case against the Respondent holding rights or legitimate interests in the Domain Names, and the Respondent has failed to rebut this conclusion. The second element of the Complaint is therefore established.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), provides a non-exclusive list of circumstances indicating bad faith, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
As discussed above, this is exactly what the Respondent appears to have done. The Respondent made no use of the Domain Names for their purported generic value, but clearly targeted potential customers of the Complainant’s pool installation services, particularly in Virginia. The home pages of the Respondent’s websites in some cases included photographs labeled with the Complainant’s name, thus reinforcing the initial interest confusion created by the Domain Names themselves. Website visitors were then led to the Respondent’s links and its competing commercial offers.
In discussing the third element of the Complaint, the Respondent does not offer alternative, legitimate reasons for so employing the Domain Names. Instead, it contends that the Complainant has not met its burden of proof. The Complainant has offered sufficient evidence of its history with the Respondent and of the content of the websites formerly associated with the Domain Names to support an inference of a bad faith attempt to mislead Internet users for commercial gain. The Respondent has failed to offer persuasive evidence to the contrary.
The Panel concludes that the third element of the Complaint has been established.
E. Reverse Domain Name Hijacking
The Respondent requests a ruling to the effect that the Complaint represents an attempt at reverse domain name hijacking. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Given the Panel’s conclusion that the Complaint is well founded under the Policy, the Panel denies the Respondent’s request for a ruling of reverse domain name hijacking.
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, <riverpools.net>, <riverpoolsva.com>, <riverpoolsva.net>, <riverpoolsvirginia.com>, and <riverpoolsvirginia.net>, be transferred to the Complainant.
W. Scott Blackmer
Dated: August 25, 2010