WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Jacuzzi Inc. v. Whoisguard Protected, Whoisguard, Inc. / Muhammad Ayaz, Desire Soft / Vincent Paul
Case No. D2016-2355
1. The Parties
The Complainant is Jacuzzi Inc. of Chino Hills, California, United States of America ("United States") represented by Donahue Fitzgerald LLP, United States.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama, Panama / Muhammad Ayaz, Desire Soft of Lahore, Pakistan / Vincent Paul of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <jacuzze.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 18, 2016. On November 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 22, 2016, 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 November 24, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
On November 25, 2016, the Respondent Muhammed Ayaz, Desire Soft, submitted an informal communication.
The Complainant filed an amended Complaint on November 29, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2016. The Respondent did not submit a formal response, but the Respondent Muhammed Ayaz, Desire Soft, submitted informal communications on December 21, 2016 and December 23, 2016 respectively.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 3, 2017. 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 of spa and pool products under the JACUZZI mark. The Complainant is the owner of several hundred international registered trademarks incorporating the JACUZZI mark, including United States registered trademark no. 1101174 for the word mark JACUZZI registered on September 5, 1978 in international classes 7, 10 and 11. The Complainant has used the JACUZZI mark in the United States since 1930 and in international markets since 1965. The Complainant has used the <jacuzzi.com> domain name in connection with its official website since registration in 1995. The Complainant also uses a composite mark, being of an oval device containing the JACUZZI word mark, which is featured at the top of every web page on the Complainant's official website at "www.jacuzzi.com".
The disputed domain name was created on August 24, 2016. Screenshots of the associated website dated October 21, 2016 show a title of "Jacuzze an online Hot Tubs and Spas Blog and Shopping Guide" together with featured posts titled "HOT TUBS AND PORTABLE SPAS", "USED HOT TUBS", "HOT TUBS FOR SALE" and "HOT TUB RENTALS". The said website also states "Jacuzz.com [sic] is a direct manufacture and retailers of quality hot tub and spas. Our factory has been around for about 36 years, and about 6 years ago Jacuzze.com started selling direct on the internet. This is our official manufacturer's web-site, where we also sell direct to you, the consumer, at the lowest prices. Jacuzze cuts out the middleman by selling direct to you therefore giving you high quality spas at the lowest possible pricing." The website featured a facsimile of the Complainant's oval device but with the word "Jacuzzi" replaced with "Jacuzze". It also provided a prominent link named "SHOP" which, prior to its deletion, directed visitors to a shopping page under the disputed domain name which advertised for sale various products manufactured by third parties including spas manufactured by the Complainant's competitors.
Between October 27 and 28, 2016, the Complainant communicated with the Respondent Muhammed Ayaz, Desire Soft. In an email dated October 27, 2016 responding to the Complainant's formal cease-and-desist notice of the same date, the Respondent stated "It is just a blog to provide information about your brand, we are not doing any violations... please let me know what wrong you saw in it", later adding "I will keep promoting my blog, if you have any issue with my domain name or information let me know. I am happy to sell my domain name to you guys if you pay me a reasonable. Price or let me keep working i will promote your brand on my blog with out selling any product on it".
On October 28, 2016, the Respondent Muhammed Ayaz, Desire Soft emailed the Complainant indicating that updates had been made to the website associated with the disputed domain name and confirming that the site was affiliated with the retailer Amazon and that the Respondent was promoting Amazon advertisements on its site for commercial gain. The Respondent noted that it was offering to remove the advertisements and directly promote the Complainant's products in return for commission. Later on the same day, the Complainant indicated to the Respondent by email that it would entertain reimbursing the fees which the Respondent paid to register the disputed domain name. In its response to that proposal, the Respondent stated "I am demanding USD 5,000 which is my investment on this website. I have made all changes and i hope now my domain and website not doing any violation of your brand, it is a simple blog which providing information about hot tubs and if this domain name was relevant to your business than you shouldn't let it on sell, you need to buy it before, now i own this name and i have made my investment, i am the owner and i will decide what i have to advertise on it."
By November 6, 2016, the website associated with the disputed domain name had been changed to remove the "SHOP" link although the shop page remained directly accessible via other links within that website and third party products manufactured by the Complainant's competitors were still being offered for sale.
5. Parties' Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts both registered trademark and common law trademark rights in the JACUZZI mark substantially predating the Respondent's registration of the disputed domain name. The Complainant submits that the "jacuzze" subdomain of the disputed domain name represents a very minor misspelling of the Complainant's mark and adds that the registration of a domain name with an insignificant modification of another's trademark is commonly referred to as "typosquatting", noting that such domain names are confusingly similar by definition. The Complainant submits that the substitution of the letter "i" with a letter "e" is intended to capture users making an "understandable typing error".
The Complainant asserts that it has never authorized the Respondent to use its JACUZZI trademark in the disputed domain name or otherwise. The Complainant submits that the Respondent had notice of this dispute when registering the disputed domain name because the Complainant's mark is of long-standing and world-famous and the disputed domain name represents a typographical variant thereof and has been used to market competing products. The Complainant contends that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods in light of the Respondent having offered products competitive to those of the Complainant. The Complainant adds that there is no evidence that the Respondent has ever been commonly known by the disputed domain name and that the Respondent's use of the disputed domain name is commercial in nature such that there can be no legitimate noncommercial or fair use thereof.
The Complainant submits that bad faith registration is demonstrated by the act of "typosquatting" in the present case. The Complainant contends that the registration of the disputed domain name more than half a century after the Complainant began to obtaining rights in the JACUZZI mark is indicative of bad faith as the Respondent knew or should have known of such mark. The Complainant adds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website by the Complainant. The Complainant contends that the situation has been made worse by the Respondent's failure to post any disclaimer alerting users to the fact that the Complainant has not sponsored, endorsed or approved of the website associated with the disputed domain name. The Complainant asserts that the disputed domain name is so obviously connected with a
well-known product that its use by the Respondent, having no connection thereto, suggests opportunistic bad faith.
The Complainant notes that the Respondent has spent no more than USD 13.95 to register the disputed domain name yet has offered to sell it to the Complainant for USD 5,000 contending that the attempt to profit from selling the disputed domain name for an amount vastly exceeding the Respondent's out-of-pocket costs conclusively establishes the Respondent's bad faith pursuant to paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant's contentions in a formal Response. However, the Respondent Muhammed Ayaz, Desire Soft, made the following contentions in informal email. The Respondent contended that it was not a citizen of the United States or any country where the Complainant's trademark was registered, asserting that the Complainant would not be entitled to a transfer of the disputed domain name. The Respondent noted that it had already made an investment into the disputed domain name and would not "give up". The Respondent reiterated that it was willing to transfer the disputed domain name if the Complainant reimbursed the Respondent for its investment in the disputed domain name.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of 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
The Panel accepts the Complainant's submissions regarding its registered trademark in respect of the word mark JACUZZI. In these circumstances, it is not necessary for the Panel to have regard to the Complainant's additional submissions regarding an alleged common law trademark in the same term.
On comparing the disputed domain name to the said mark, the Panel notes that the disputed domain name is alphanumerically identical to such mark with the exception of the substitution of the letter "e" in place of the letter "i". In the Panel's opinion, this substitution does not distinguish the disputed domain name from the Complainant's mark which remains both aurally and visually similar. The generic Top-Level Domain ("gTLD") (".com") is typically disregarded for the purposes of comparison in cases under the Policy on the grounds that it is required for technical reasons only.
The Complainant has alleged that the Respondent is "typosquatting", an activity described in previous decisions under the Policy as the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark. Such common typographical variants typically give rise to a finding of confusing similarity (see, for example, Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556 (transposition of the letters "l" and "o" in the domain name <vlovo.com>)).
The Respondent indicates that the Complainant's mark is not in force in its jurisdiction. This argument does not assist the Respondent's case in that the location of the trademark is irrelevant for the purpose of finding rights under the first element of the Policy (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
The Panel is satisfied that the spelling of the disputed domain name contains a predictable mistyping of the Complainant's distinctive trademark which in the present case may reasonably be characterized as "typosquatting" and accordingly finds that this is confusingly similar to such mark. In these circumstances, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed 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 a legitimate non-commercial 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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. The Panel is satisfied that in the present matter the Complainant has made out such a prima facie case based upon its submissions that it has never authorized the Respondent to use its JACUZZI trademark, that the Respondent likely had notice of such mark due to its long-standing and famous nature and because the Respondent selected a close typographical variant thereof, that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, that there is no evidence that the Respondent has been commonly known by the disputed domain name and that the commercial use to which the disputed domain name has been put precludes any assertion of legitimate noncommercial or fair use.
The Panel therefore turns to consider the Respondent's case to determine whether such prima facie case has been rebutted. There has been no formal Response filed in the present case and the Panel can identify no suitable rebuttal in the Respondent's informal assertions received by the Center or in the Respondent's correspondence with the Complainant. It is clear to the Panel from the use to which the disputed domain name has been put that the Respondent has sought to directly reference the Complainant's well-known JACUZZI mark by way of a subtle typographical variant with a view to promoting affiliate scheme links for third party products on the associated website. Such an activity could not be considered to be a bona fide offering of goods or services in any respect whatsoever and, in the Panel's opinion, can confer no rights or legitimate interests upon the Respondent.
In these circumstances, the Respondent has failed to rebut the Complainant's prima facie case outlined above and accordingly the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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."
Based on nature of the disputed domain name considered along with the content of the screenshots of the associated website provided by the Complainant, which the Respondent has not sought to challenge, the Panel is satisfied that the Respondent has intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement in accordance with paragraph 4(b)(iv) of the Policy. There is no doubt in the Panel's mind that the disputed domain name is a close typographical variant of the Complainant's trademark, such that a likelihood of confusion is almost inevitable, and that the intention of the Respondent was to impersonate the Complainant through the registration and use of the disputed domain name. Furthermore, the Panel considers that the likelihood of confusion has been exacerbated by the deployment of the oval device as a logo on the Respondent's site which is identical in appearance to that used by the Complainant and which is presented in association with the promotion of spa products manufactured by the Complainant's competitors.
In the Panel's view, the changes which the Respondent has made to its website following receipt of the Complainant's cease-and-desist notice are insufficient to mitigate the likelihood of confusion. Such confusion arises in the first instance from the impersonation of the Complainant that is inherent in the close typographical variation of its well-known trademark regardless of the content of the associated website. In any event, such changes cannot cure the Respondent's original bad faith intent relating to the registration and use of the disputed domain name as demonstrated by the screenshots produced by the Complainant.
Furthermore, while the Respondent's offer of the disputed domain name for sale to the Complainant at an amount exceeding its out-of-pocket costs may not necessarily fit squarely within the terms of paragraph 4(b)(i) of the Policy, in that the Respondent's primary purpose appears to have been to operate an affiliate scheme with a prominent online retailer rather than to sell the disputed domain name to the Complainant, the circumstances described in paragraph 4(b) of the Policy are expressed to be non-exclusive and, as such, are not closed. The Respondent has been found to be operating a website promoting products similar to those manufactured by the Complainant under the disputed domain name which is a close typographical variant of the Complainant's well-known mark. When challenged by the Complainant, the Respondent's retort was to make a self-described "demand" for USD 5,000 to repay its alleged investment in the disputed domain name and website. In the particular circumstances of this case, the Panel finds that this is a factor indicative of registration and use in bad faith.
The Respondent notes in its informal communication that the Complainant's mark is not in force in the jurisdiction where the Respondent is based. This might have been a relevant submission if it were part of a wider assertion that the Respondent was unaware of the Complainant's trademark and thus could have had no intent to target it through the registration or use of the disputed domain name. However, the Respondent does not attempt to make such a wider assertion and in the Panel's view it would have been unable to do so convincingly in this case. The Respondent's use of the disputed domain name to promote spas and pools, both similar products to those manufactured by the Complainant, indicates that it most probably selected the disputed domain name with full knowledge of the Complainant and its rights and indeed with a view to using the Complainant's trademark and a facsimile of its logo to promote its affiliate scheme links for commercial gain.
In all of the above circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith and accordingly that the Complainant has satisfied the requirements of 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 disputed domain name <jacuzze.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: January 6, 2017