WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Swimways Corporation v. Domain Hostmaster, Customer ID 38520011386763, Whois Privacy Services Pty Ltd. / Sushil KC, Domain Solution UG
Case No. D2015-0195
1. The Parties
The Complainant is Swimways Corporation of Virginia, United States of America, represented by Gavin Law Offices, PLC, the United States of America.
The Respondent is Domain Hostmaster, Customer ID 38520011386763, Whois Privacy Services Pty Ltd. of Queensland, Australia / Sushil KC, Domain Solution UG of Bremen, Germany.
2. The Domain Name and Registrar
The disputed domain name <swimway.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2015. On February 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 16, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on February 18, 2015.
The Center verified that the Complaint together with the amendment to the Complaint (hereafter “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 February 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 24, 2015. 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 manufacturer and distributor of water-related toys, accessories and gear in the United States of America and internationally. The Complainant distributes its brands of water toys in more than 20,000 storefronts, including well-known big-box retailers such as Target and Toys-R-Us.
The Complainant is the owner of a number of trade marks consisting of the word SWIMWAYS (the “SWIMWAYS Mark”), for goods in class 28 being water-related toys, accessories and gear, first registered in the United States in 1986. The Complainant has also registered domain names containing the SWIMWAYS Mark including <swimways.com>, <swimways.net>, <swimways.org>, <swimwaysonline.com>, <swimwaysstore.com> and <shopswimways.com>. Each of these domain names redirects users to the Complainant’s website at “www.swimways.com”.
The Domain Name <swimway.com> was registered on October 9, 2004. The Domain Name resolves to a website (the “Respondent’s Website”), which consists of a series of links to sub-pages that provide swimming-related products and may operate on a pay-per-click basis. The Respondent’s Website contains pages, accessed through links on the home page at “www.swimway.com” that make specific reference to the Complainant, including “Swimways Float” a product offered by the Complainant.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s SWIMWAYS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the SWIMWAYS Mark. It owns trade mark registrations for the SWIMWAYS Mark in the United States of America and various countries internationally including Mexico, Australia and China.
The Domain Name consists of the SWIMWAYS Mark minus the final “s”. This deletion does nothing to detract from the confusingly similarity of the Domain Name to the SWIMWAYS Mark in sight, sound and/or meaning. See Louis Vuitton v. Net-Promotion, WIPO Case No. D2000-0430 and Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698.
The Respondent has no rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use and register any domain name incorporating the SWIMWAYS Mark, nor does the Respondent appear to be commonly known by the Domain Name. The Respondent uses the Domain Name to divert consumers to competing manufacturers and distributors of water-related toys, gear and accessories. The Respondent’s use of the SWIMWAY Mark in the Domain Name is deliberate and designed to exploit the prestige and goodwill of Complainant to attract and divert consumers to Complainant’s competitors. Such use does not grant rights or legitimate interests in the Domain Name.
The Domain Name was registered and is being used in bad faith. The Respondent has registered and used the Domain Name with the intention of attracting consumers to its website by means of confusion with the SWIMWAYS Mark for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the SWIMWAYS Mark, having registrations for the SWIMWAYS Mark in the United States of America.
The Domain Name consists of the SWIMWAYS Mark and minus the letter “s”. In the present case the removal of the final letter “s” from a domain name that otherwise incorporates a mark in its entirety does not prevent a finding of confusing similarity. Moreover, a person viewing the Domain Name may be confused into thinking the Domain Name refers to a site run by the Complainant.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s SWIMWAYS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.” (Policy, paragraph 4(c))
The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the SWIMWAYS Mark or a mark similar to the SWIMWAYS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use.
Rather the Respondent uses the Domain Name to operate a website that competes with the Complainant in offering water-related products and, without the permission of the Complainant, makes references to the Complainant and its product that may assist in persuading visitors that the website is associated with the Complainant or at least offers its products. The Respondent can be presumed to receive income from such behaviour through people who visit the Respondent’s Website after being enticed by the similarity of the Domain Name to the SWIMWAYS Mark. Such use, being commercial and misleading, is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests including providing evidence of the bona fide nature of the Respondent’s Website but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent 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 owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the SWIMWAYS Mark at the time the Respondent registered the Domain Name. The Respondent’s Website makes reference to the Complainant, its products and offers similar goods as the Complainant. The registration of the Domain Name in awareness of the SWIMWAYS Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the SWIMWAYS Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consists of a website that offers links to various swimming-related products that compete directly with the products offered by the Complainant. The only apparent purpose behind the conduct of the Respondent is to gain financial revenue from people who visit the Respondent’s site out of confusion or because they assume it is a site connected to the Complainant. It appears both from the Domain Name itself and from the Respondent’s Website that it is highly likely that the Respondent has intentionally attempted to attract Internet users to the Respondent’s Website by means of confusion with the SWIMWAYS Mark, and receives or intends to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <swimway.com> be transferred to the Complainant.
Date: March 27, 2015