WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fluidra Commercial, S.A., and Manufacturas Gre, S.A v. WhoisGuard Protected, WhoisGuard, Inc. / Hisham Abughoneima / Atheer Mostafa
Case No. D2020-2015
1. The Parties
The Complainants are Fluidra Commercial, S.A., and Manufacturas Gre, S.A, Spain (hereinafter referred both together as the “Complainant”), represented by Herrero & Asociados, Spain.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Hisham Abughoneima, Egypt / Atheer Mostafa, Egypt.
2. The Domain Name and Registrar
The disputed domain name <grepools.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2020, 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 August 6, 2020 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 amended Complaint on August 17, 2020.
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 August 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 10, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 11, 2020.
The Center appointed Antony Gold as the sole panelist in this matter on September 21, 2020. 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 part of the Fluidra Multinational Group, which was founded in 1969. The group trades in over 45 countries and provides goods and services in the residential and commercial swimming pool market. It has over 5500 employees and global sales in 2019 were approximately EUR 1.3 billion.
One of the brand names the Complainant uses in relation to its goods and services is GRE. The Complainant owns a number of trade marks to protect this trading style in both word and combined word and device form. These include, by way of example only:
- Spanish trade mark, registration number 3567867, for GRE (word only) in classes 8, 11 and 35, registered on June 22, 2015;
- International trade mark, registration number 1270883, for GRE (word and device) in classes 1, 6, 7 and 19, registered on February 7, 2015. The Complainant’s logo comprises the word GRE, beneath which is a swoosh and above which is a stylized representation of a person swimming.
The Complainant also owns number of domain names, including <gre.es> and <grepool.com>, which resolve to active websites promoting the Complainant’s products and services.
The disputed domain name was registered on December 20, 2012. It resolves to a website which offers for sale swimming pools and associated products under the brand “Gre pools company”. The Complainant’s logo, in the form described above, is used on each page of the website.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its trade marks for GRE, full details of two of these marks having been set out above. This mark is included in full in the disputed domain name. Whilst the disputed domain name also includes the word “pools”, this simply describes the main product offered for sale by the Complainant.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has exclusive rights to the trade mark GRE and can license or authorize others to use it. It has not authorized the Respondent to do so. The Respondent does not own any trade marks or other rights for GRE, nor does it have any association with the Complainant nor any other right to use GRE. Moreover, the Respondent is not carrying out any legitimate activity under the name GRE but instead is offering the same products as the Complainant and is using the same name and logo to do so. The Complainant has made out a prima facie case that the Respondent’s activities do not fall within any of the circumstances set out at paragraph 4(a) of the Policy and that the Respondent does not therefore have any rights or legitimate interests in respect of the disputed domain name. The burden of production now shifts to the Respondent to show that it does have such rights or legitimate interests.
Lastly, the Complainant says that the disputed domain name was registered and used in bad faith The Complainant’s brands and trade marks, including its GRE mark, are well-known in the swimming pool and leisure sector. The Complainant’s first registration of the trade mark GRE in relation to swimming pool products was in 1980 and it has a Swiss trade mark registration featuring its logo, which was made in 2011 and which is still in force, which pre-dates registration of the disputed domain name. Accordingly, it is likely that the Respondent registered the disputed domain with knowledge of the Complainant’s mark. This comprises a bad faith registration; see, for example, The Commissioners for HM Revenue and Customs v. Wei Wang, APIS, WIPO Case No. D2017-1492 and the panel’s finding that “Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest”.
The disputed domain name is also being used in bad faith. In particular, the Respondent has intentionally attempted to attract for commercial gain Internet users to its 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 or of a product or service on it. As the disputed domain name is being used to offer goods and services which are identical to those registered by the Complainant it is clear that the Respondent is using the disputed domain name in order to cause confusion to customers and to lead them to believe that the products on the Respondent’s website are those of the Complainant. The Respondent is accordingly using the disputed domain name in order to take unfair advantage of the Complainant’s reputation in the marketplace.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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 information provided by the Complainant in relation to its trade mark registrations for GRE, including the marks in respect of which full details are provided above, establish its rights in this trade mark.
For the purpose of determining whether the disputed domain name is identical or confusingly similar to its mark, the generic Top-Level Domain (“gTLD”) “.com” is generally disregarded as this is a technical requirement of registration.
The disputed domain name comprises the Complainant’s GRE trade mark in full, coupled with the word “pools”. The addition of this dictionary term does not impact on an assessment of whether the disputed domain name is confusingly similar to the Complainant’s trade mark. As explained in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The disputed domain name includes the Complainant’s GRE mark in its entirety and is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods and services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Whether the Respondent might be considered to be using the disputed domain name in connection with a bona fide offering of goods and services requires consideration of the use which it is making of the disputed domain name. The Complainant has produced a screen-print of a single page from the Respondent’s website which shows that is offering a range of swimming pools and is also making use of the Complainant’s distinctive logo, described above. However, it can often be of assistance to a UDRP panel to visit a respondent’s website so that it can be considered in more detail. Section 4.8 of WIPO Overview 3.0 explains that: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”.
The Panel has accordingly visited the website to which the disputed domain name resolves and notes that, the “about” section of its website states that: “Gre pools company is a member of Green Dreams group which has more than 14 years experience of the egyptian market”. However, further down the same page, the claim is made that “We are the agent of GRE company, a spanish company with more than 60 years experience in the field of swimming pools”. Having regard to the Complainant’s express disavowal of there being any form of commercial connection between the parties, this assertion is evidently untrue. The Respondent is making a false claim of an association with the Complainant in order to enhance its own standing and its use of the Complainant’s GRE trade mark and logo plainly reinforces a perceived connection between the parties. Unfairly and misleadingly using the repute of the Complainant in this manner precludes the Respondent’s offering of goods and services from being considered bona fide.
The second and third circumstances set out at paragraph 4(c) of the Policy are also inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character. Moreover, as explained at section 2.5 of the WIPO Overview 3.0: “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner”; in addition section 2.5.1 comments that: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.”
The Complainant has therefore made out a prima facie case under the second element and the burden of production shifts to the Respondent. In view of the failure of the Respondent to provide a response to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of considering whether a respondent’s registration of a domain name is in bad faith, it is often of assistance to a panel to know the repute of a complainant’s mark as at the time of the respondent’s registration of the domain name. This can help inform the panel as to whether the respondent was likely to have registered the domain name with the complainant’s mark in mind.
The Complaint provides very little detail in this respect, explaining only that: “the first registration of the term ‘GRE’, related to swimming pool products and services, took part in 1980, and has one Swiss brand which is currently in force, which was registered with the new ‘GRE’ logo, in 2011, before the domain name ‘grepools.com’ registration date”. The Panel has established through checking the online database of the Swiss Federal Institute of Intellectual Property, that the Complainant does indeed have a Swiss trade registration which pre-dates the registration of the disputed domain name, namely registration number 627001 for GRE in the form of the word and device mark described above, in classes 12 and 28, which was applied for on April 1, 2011 and registered on March 14, 2012.
In determining whether the facts and matters within the Complaint support a finding of bad faith registration, notwithstanding the sparse information provided by the Complainant, the Panel has regard to the following. First, the Complainant’s registered rights in at least one of its GRE marks pre-date the date of registration of the disputed domain name. Second, the Respondent has not challenged the Complainant’s assertion that its first trade mark for GRE was made much earlier, in 1980. This suggests that its rights were well-established by the date of registration of the disputed domain name. Third, the disputed domain name couples the Complainant’s GRE mark with a word descriptive of the primary product it sells, that is “pools”. Having regard to the use which is presently made by the Respondent of the disputed domain name, it is reasonable to assume that it was registered for the same purpose, namely to take unfair advantage of the Complainant’s repute in the field of swimming pools by confusing prospective customers into thinking that there was a connection between its goods and services and those of the Complainant. In the light of these considerations, the Panel finds that the disputed domain name was registered in bad faith.
Turning to bad faith use, 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls squarely within these circumstances in that the misleading content of the Respondent’s website, coupled with its use of the Complainant’s trade marks, will lead many Internet users to believe that it is operated with the authorization and support of the Complainant. The belief of Internet users that this is the case will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s GRE trade mark.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 <grepools.com> be transferred to the Complainant.
Date: October 7, 2020