WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clearwater Systems, Inc. v. Clear Water Systems, Bill Terrones
Case No. D2014-0879
1. The Parties
Complainant is Clearwater Systems, Inc. of Akron, Ohio, United States of America (“US”), represented by Walker & Jocke, US.
Respondent is Clear Water Systems, Bill Terrones of Mohave Valley, Arizona, US.
2. The Domain Name and Registrar
The disputed domain name <clearwatersystemsaz.net> is registered with Register.com (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 the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceedings commenced on June 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2014. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 30, 2014. On July 1, 2014, the Respondent sent an informal email communication to the Center.
The Center appointed Gary J. Nelson as the sole panelist in this matter on July 8, 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
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 the water treatment products for commercial and domestic use, namely, water filters, aerators, and water conditioners.
The disputed domain name was registered on August 7, 2012. The operational website at <clearwatersystemsaz.net> features and promotes a business specializing in water treatment services.
5. Parties’ Contentions
Complainant uses its CLEARWATER SYSTEMS marks in association with 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 <clearwatersystemsaz.net> domain name.
Respondent uses its <clearwatersystemsaz.net> 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 <clearwatersystemsaz.net> 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.
Respondent did not formally reply to Complainant’s contentions. On July 1, 2014, the Respondent sent an email communication to the Center the sole content of which was “That’s stupid!!!”.
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, and appears to have achieved actual notice to Respondent.
In view of Respondent’s failure to submit a formal 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., August 7, 2012).
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, <clearwatersystemsaz.net>, is confusingly similar to Complainant’s CLEARWATER SYSTEMS trademark because the disputed domain name incorporates the entirety of the CLEARWATER SYSTEMS trademark and merely adds a generic geographically descriptive term (i.e., “az” is commonly known as “Arizona”) and a top-level “.net” domain suffix. Neither the addition of a purely descriptive term to a well-known mark nor the addition of a generic Top-Level Domain suffix is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Net2phone Inc. v. Netcall Sagl, WIPO Case No. D2000-0666 (finding that the combination of a geographic term with an established trademark does not prevent a domain name from being found confusingly similar); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (finding that the addition of the geographic country descriptor “china” to form <cellularonechina.com> was confusingly similar to the CELLULAR ONE trademark); CMGI, Inc. v. Reyes, WIPO Case No. D2000-0628 (finding <wal-mart-europe.com> confusingly similar to the WAL-MART trademark). Accordingly, in regard to the disputed domain name, Respondent has merely added a well-known geographic location phrase to the CLEARWATER SYSTEMS mark.
The addition of the letters “az,” which are equivalent to “Arizona” directly behind the CLEARWATER SYSTEMS mark is insufficient to avoid a finding of confusing similarity.
Complainant has proven the requirement of Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests; Registered and Used in Bad Faith
Respondent has failed to file a formal 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 formal response, the Panel notes that Respondent's website at “www.clearwatersystemsaz.net” does apparently host an operational website where Respondent appears to be operating a business in association with the name Clear Water Systems. Respondent appears to be using CLEAR WATER SYSTEMS as a trademark and/or a service mark on its website for goods/services related, if not identical, to the goods/services 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 paragraph 4(b)(iii) of the Policy.
Complainant has provided unrebutted evidence showing that Respondent is operating a website at <clearwatersystemsaz.net> featuring products/services that are related to the products covered by its trademark registrations. Respondent’s decision to merely add a geographically descriptive abbreviation (i.e., “az”) to the end of Complainant’s CLEARWATER SYSTEMS trademark 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 <clearwatersystemsaz.net> be transferred to Complainant.
Gary J. Nelson
Date: July 14, 2014