WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
At Home Recreation LLC v. Namco LLC , Michael Benito
Case No. D2013-1881
1. The Parties
The Complainant is At Home Recreation LLC of East Brunswick, New Jersey, United States of America (“U.S.”), represented by Ben D. Manevitz of Manevitz Law Firm LLC of Clifton, New Jersey, U.S.
The Respondent is Namco LLC of Manchester, Connecticut, U.S., and Michael Benito of Manchester, Connecticut, U.S.
2. The Domain Name and Registrar
The disputed domain name <athomerecreation.com> (the “Domain Name”) is registered with TierraNet d/b/a DomainDiscover (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2013. On November 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 November 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for submitting a response was November 28, 2013. The Respondent did not submit a response. Accordingly, the Center notified the parties of the Respondent’s default on November 29, 2013.
The Center appointed Marylee Jenkins as the sole panelist in this matter on December 9, 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
The Complainant is a retailer that offers for sale pools, spas, patio furniture and lighting and other related equipment and products and services. The Complainant bases its claims on common law rights to the mark AT HOME RECREATION and its company/trade name, At Home Recreation LLC. The Complainant has used the mark and trade name AT HOME RECREATION and has registered the domain name <athomerecreation.net> since at least 2009 and has operated a website at this domain name since at least as early as March 2010.
The Domain Name was registered on January 15, 2011 and is set to expire on January 15, 2014. The Domain Name currently redirects users to a website at <www.namcopool.com>.
5. Parties’ Contentions
The Complainant asserts that, although it does not own a federal registration for its mark AT HOME RECREATION, it has common law rights therein. Particularly, it argues that the mark is not merely descriptive but is suggestive and relies on evidence of secondary meaning to establish its rights therein. The Complainant argues that it has had a significant length and exclusivity of use in the marketplace, sales success, media coverage, advertising and other indicia of the linkage in the public mind of the mark to the source that is required to establish strong secondary meaning in this context and has submitted evidence to support these arguments.
The Complainant argues that the Domain Name is identical to its name and mark AT HOME RECREATION. The Complainant further argues that the Respondent has no rights or legitimate interests in the Domain Name in that: (i) the Complainant has not authorized or consented to the Respondent’s use of the trademark; (ii) the Respondent is not affiliated in any way with the Complainant; (iii) the Respondent has never been commonly known (or referred to at all) by the mark nor can there be any claim that the Respondent is making a non-commercial or fair use of the Domain Name; and (iv) the Respondent is using the Domain Name to divert consumers to its own competitive website and to trade on the trademark value of the Complainant’s trademark by offering for sale goods that are directly competitive with those of the Complainant.
The Complainant argues that the Domain Name was registered and is being used in bad faith by the Respondent to create a likelihood of confusion with the name and mark AT HOME RECREATION in order to attract for commercial gain Internet users to the Respondent’s website. Particularly, the Complainant alleges that the Respondent is using the Domain Name to redirect Internet users to its website at the domain name <namcopool.com>, which the Complainant alleges is a site selling goods directly in competition with the Complainant’s goods. The Complainant also alleges that the Respondent acted in bad faith in the registration of the Domain Name noting that the Respondent had direct knowledge of the Complainant’s name and mark AT HOME RECREATION based on a declaration indicating that: (i) the Complainant’s President directly informed the Respondent that he intended to begin his business even before he did so; (ii) the Respondent is allegedly losing business to the Complainant since such notification; (iii) the Respondent opened a physical store about 600 feet from one of the Complainant’s stores; and (iv) the Respondent chose to register exactly the name of its competitor.
The Respondent did not file a response with respect to this proceeding.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder 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 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
The Complainant in this proceeding has not claimed that it owns any trademark registrations for the mark AT HOME RECREATION. Rather the Complainant bases its Complaint on common law trademark rights in the trade name and mark AT HOME RECREATION and its continuous use thereof in conjunction with retail stores and its web site offering for sale pools, spas, patio furniture and lighting and other related equipment and products and services in New Jersey. However, to establish such common law rights, the Complainant must show that its mark has achieved secondary meaning or association with it. In determining whether the Complainant's mark has acquired secondary meaning, one must consider a variety of factors, including, but not limited to, advertising, promotion, sales, media coverage and the length, manner and exclusivity of use of the mark by the Complainant.
Based on the uncontested submitted evidence, the Complainant has shown use of its trade name and mark AT HOME RECREATION in connection with its retail store and online services for several years and prior to the registration date of the Domain Name. In addition, evidence of the Complainant's use of the AT HOME RECREATION mark in its stores, on its web site, and in its promotional/advertising materials, news articles and searches regarding the Complainant and the use of its mark on a search engine website, further demonstrate the Complainant's promotion, marketing and advertising thereof in connection with its services and products. Accordingly, based on the findings and uncontested evidence presented and that the Respondent has not disputed or challenged the Complainant's rights therein, the Panel is satisfied for the purposes of this proceeding that the Complainant has shown it possesses common law trademark rights.
A review of the second-level domain of the Domain Name shows that it consists of the Complainant’s trade name and mark AT HOME RECREATION in its entirety. The Panel therefore finds that paragraph 4(a)(i) has been satisfied based upon the Domain Name being identical to the Complainant’s trade name and mark AT HOME RECREATION.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder’s rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise by the Domain Name. The uncontested evidence shows that the Complainant had established rights to its name and mark at the time of the Respondent’s registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. The Complainant alleges that the Domain Name redirects to a website of the Respondent. The Respondent has not presented any evidence or arguments to refute this allegation. The redirection of Internet users accessing the Domain Name to the Respondent’s website is clearly an attempt by the Respondent to misleadingly divert consumers. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and used in bad faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
No evidence has been presented that the Respondent is commonly known by the Domain Name. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. The Complainant asserted in its Complaint and provided evidence as well as a declaration from its president stating that the website accessible at the Domain Name redirects to the website <www.namcopool.com>, which is operated by the Respondent in competition with the Complainant. Such uncontested evidence shows that the Respondent was not making a legitimate non-commercial or fair use of the Domain Name but rather the Respondent registered the Domain Name primarily for the purpose of disrupting the business of a competitor thereby evidencing its bad faith registration and use of the Domain Name.
The evidence submitted by the Complainant also shows that the registration of the Domain Name by the Respondent does not predate the Complainant's earlier first use and first use in commerce of its name and mark. Nor has any evidence been presented that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s name or mark in any manner. Rather based on the submitted evidence, the Respondent clearly had actual knowledge of the Complainant’s name and mark and has further intentionally attempted to attract, for commercial gain, Internet users to its own website by redirecting users accessing the Domain Name to its website thereby creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement thereof. The Panel thus concludes that the Respondent has registered and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <athomerecreation.com> be transferred to the Complainant.
Date: January 6, 2014