WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clearwater Systems, Inc. v. Clear Water Systems / Charles Maddox
Case No. D2014-0877
1. The Parties
Complainant is Clearwater Systems, Inc. of Akron, Ohio, United States of America (“United States”), represented by Walker & Jocke, United States.
Respondent is Clear Water Systems / Charles Maddox of Jackson, California, United States.
2. The Domain Name and Registrar
The disputed domain name <clearwatersys.com> is registered with Hostopia.com Inc. d/b/a Aplus.net (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2014. On May 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 28, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 30, 2014.
The Center verified that the Complaint together with the amended 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 June 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2014. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 23, 2014.
The Center appointed Gary J. Nelson as the sole panelist in this matter on July 1, 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.
Upon review of the case file, the Panel noticed that the Complaint was not notified in accordance with paragraph 2(a) of the Rules. Therefore, in abundance of caution and to ensure compliance with paragraph 2(a) of the Rules, the Panel issued a Procedural Order, which the Center communicated to the Parties on July 22, 2014, notifying the Respondent of the Complaint, and inviting the Respondent to indicate to the Center within five calendar days whether it wished to submit a Response. The Respondent did not reply to the Panel Order. The Panel has therefore moved to issuing a Decision in this case.
4. Factual Background
Complainant is the owner of at least one United States trademark registration for CLEARWATER SYSTEMS. Specifically, Complainant owns at least the following trademark registration in the United States:
Dates of Application and Registration
May, 11, 1995
June 3, 1997
Complainant has used the CLEARWATER SYSTEMS trademark in the United States in connection with water treatment products for commercial and domestic use, namely, water filters, aerators, water conditioners.
The disputed domain name was registered on April 10, 2003. The operational website at “www.clearwatersys.com” features and promotes a business specializing in water treatment services and which identifies and recommends water treatment products.
5. Parties’ Contentions
Complainant uses its CLEARWATER SYSTEMS marks in association with a water treatment products.
Complainant owns numerous valid trademark registrations for CLEARWATER SYSTEMS in the United States. The CLEARWATER SYSTEMS marks have been in use in interstate commerce in the United States since at least as early as 1974.
Complainant filed for and received its CLEARWATER SYSTEMS trademark registrations long before Respondent registered its <clearwatersys.com> domain name.
Respondent uses its <clearwatersys.com> domain name to host a website that features goods and services that are identical to those of Complainant.
Respondent had constructive notice of Complainant’s CLEARWATER SYSTEMS marks as of the date Respondent registered the <clearwatersys.com> domain name.
Complainant began using its own website at “www.clearwatersystems.com” for goods and services related to water filtration systems, water softeners and water testing beginning at least as early as July 10, 1998. Complainant established common law trademark rights in its CLEARWATER SYSTEMS trademark at least as early as September 1, 1972.
The disputed domain name is virtually identical or confusingly similar to Complainant’s business name and Complainant’s marks.
Complainant’s rights in the CLEARWATER SYSTEMS mark were established prior to the registration of the disputed domain name.
Respondent was aware of Complainant’s rights in CLEARWATER SYSTEMS when Respondent registered the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Panel confirms that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to Respondent. In this regard the Panel notes that the Written Notice sent to Respondent’s postal address in Jackson, California, was delivered and signed for.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the CLEARWATER SYSTEMS mark and the disputed domain name is confusingly similar to Complainant’s CLEARWATER SYSTEMS mark.
Complainant owns at least one trademark registration in the United States for CLEARWATER SYSTEMS. Specifically, Complainant owns United States trademark registration no. 2,066,201. The registration date for this trademark (i.e., June 3, 1997) precedes the date upon which the disputed domain name was registered (i.e., April 10, 2003).
Accordingly, Complainant has established rights in its CLEARWATER SYSTEMS mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain name, <clearwatersys.com>, is confusingly similar to Complainant’s CLEARWATER SYSTEMS trademark. The only difference between the disputed domain name and Complainant’s CLEARWATER SYSTEMS trademark is that Respondent has replaced the word “systems” with the abbreviation “sys” and added and a generic Top-Level-Domain (“gTLD”) suffix “.com”. The Panel finds that the abbreviation “sys” is equivalent to the word “systems and holds that the mere replacement of a word incorporated into a registered trademark with an equivalent abbreviation does not overcome a proper claim of confusing similarity. See Forth & Towne (Apparel) LLC v. Michelle Tostado, WIPO Case No. D2006-1369 (finding the registered domain name <forthandtowne.biz> to be confusingly similar to Complainant’s FORTH & TOWNE trademark). Also, the addition of a gTLD suffix is insufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied).
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests; Registered and Used in Bad Faith
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221 (finding that the respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
The Panel notes that by not submitting a formal Response, Respondent failed to provide any evidence that it is a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant’s rights in its CLEARWATER SYSTEMS mark. See, e.g., Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.
Even though Respondent has not submitted a Response, the Panel notes that Respondent’s website at “www.clearwatersys.com” does apparently host an operational website where Respondent appears to be operating a business in association with the name “Clear Water Systems”. Respondent also appears to be using CLEAR WATER SYSTEMS as a trademark and/or a service mark on this same website for goods/service related, if not identical, to the goods provided by Complainant. Such use of another’s trademark or service mark cannot create rights or legitimate interests in a corresponding domain name. See F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189, see also Policy paragraph 4(b)(iii).
Complainant has provided unrebutted evidence showing that Respondent is operating a website at “www.clearwatersys.com” featuring products/services that are related to the products covered by its trademark registrations. Respondent’s decision to substitute an abbreviation (i.e., “sys”) for a portion of Complainant’s CLEARWATER SYSTEMS trademark (i.e., the word “systems”) does not instill Respondent with rights or legitimate interests in the corresponding domain name. See CHANEL, INC. v. ESTCO TECHNOLOGY GROUP, WIPO Case No. D2000-0413 (finding that use of a famous trademark to attract the public to a website is not a fair or legitimate use of the domain name, and ordering the transfer of <chanelstor.com> and <chanelfashion.com> to complainant).
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Complainant has alleged, and Respondent has not rebutted, that Respondent is intentionally using the disputed domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s CLEARWATER SYSTEMS mark as to the source, sponsorship, affiliation, or endorsement of the website. The Panel finds this unrebutted allegation to be convincing and sufficient to establish the bad faith registration and use of the disputed domain name.
Another factor supporting a finding of bad faith is that the CLEARWATER SYSTEMS mark was registered with the United States Patent and Trademark Office prior to Respondent’s registration of the disputed domain name. See Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 (finding bad faith where the respondent had actual and constructive notice of the complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide, WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
Also, the fact Respondent is holding itself out as a business operating under the name “Clear Water Systems” appears to be an infringement of Complainant’s CLEARWATER SYSTEMS trademark. This is strong evidence that Respondent registered and is using the disputed domain name in bad faith. See F.M. Tarbell Co., dba Tarbell, Realtors v. Name Catch/Mark Lichtenberger, WIPO Case No. D2007-0189.
The Panel therefore finds that Complainant has proven the requirements of Policy, paragraphs 4(a) (ii) and 4(a)(iii).
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 <clearwatersys.com> be transferred to Complainant.
Gary J. Nelson
Date: July 29, 2014