WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jacuzzi Inc. and Jacuzzi Europe S.p.A. v. Fonteyn

Case No. DNL2016-0036

1. The Parties

The Complainants are Jacuzzi Inc. of Chino Hills, California, United States of America and Jacuzzi Europe S.p.A. of Valvasone Arzene, Italy, represented by NautaDutilh N.V., the Netherlands.

The Respondent is Fonteyn of Uddel, the Netherlands, internally represented.

2. The Domain Name and Registrar

The disputed domain name <jacuzzis.nl> is registered with SIDN through Skyberate Internet Services.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 28, 2016. On June 29, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the disputed domain name. On June 30, 2016, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the "Regulations").

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2016. In accordance with the Regulations, article 7.1, the due date for Response was July 26, 2016. The Response was filed with the Center on July 26, 2016.

On July 29, 2016, SIDN commenced the mediation process. On August 26, 2016 SIDN extended the mediation process until September 26, 2016. On September 23, 2016, SIDN informed parties that the dispute had not been solved in the mediation process.

The Center appointed Alfred Meijboom as the panelist in this matter on October 5, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

Complainant Jacuzzi, Inc. is the owner of the following trademarks (the "Trademarks"):

- The Benelux word mark JACUZZI (registration number 0433222), filed on May 12, 1987 for inter alia pumps, products for hydrotherapy and therapeutic baths;

- The European Union word and device mark JACUZZI (registration number 007289283), registered on July 29, 2009 for inter alia spa baths, baths incorporating air jets, baths with hydromassage, apparatus, thermal baths, whirlpool baths, steam baths, hot tubs, whirlpool tubs, spa pools and pools.

The disputed domain name was registered by the Respondent on April 21, 2014.

5. Parties' Contentions

A. Complainants

The Complainants argue that the disputed domain name is confusingly similar to the Trademarks, considering that the Top-Level Domain should be ignored and that the disputed domain name wholly incorporates the Trademarks. The Complainants claim that the mere difference between the Trademarks and the disputed domain name is the addition of the letter "s". They furthermore state that this addition to the term "jacuzzi" causes dilution of the Trademarks.

The Complainants also claim that the Trademarks enjoy great worldwide repute, and point out that they are the owner of the domain name <jacuzzi.nl>, which redirects users to the Complainants' domain name <jacuzzi.eu>.

The Complainants further argue that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants do not contest that genuine JACUZZI baths are offered on the Respondent's website, but claim that the Respondent does not meet the criteria as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the "Oki Data criteria"¹) as the Respondent (a) uses the disputed domain name to sell other non-trademarked goods and to advertise for its outdoor living mall; (b) did not have any stock of JACUZZI baths available on December 24, 2015, and/or at the moment of registration of the disputed domain name; and (c) does not clarify on the website its relationship with the Complainants. According to the Complainants, the website does not mention that the Respondent is not an official JACUZZI dealer, while the website contains various indications which create the false impression that an official relationship between the Parties exists.

Finally, the Complainants argue that the disputed domain name was registered and is being used in bad faith as the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of its website or location or of a product on its website or location. This is even more apparent, according to the Complainants, since the Respondent has included images on its website which infringe the copyright of the Complainants, as well as a statement on the history of the JACUZZI trademark.

The Complainants claim the use of the disputed domain name is in bad faith as the Trademarks are used in an incorrect manner in the disputed domain name, which causes dilution of the Trademarks.

The Complainants request the Panel to order that the disputed domain name be transferred to the Complainant Jacuzzi Inc.

B. Respondent

According to the Respondent it has "bought the domain [name] a couple of years ago when [it] had the real intention to sell the original Jacuzzi's". It purchased original JACUZZI hot tubs through the Complainants' exclusive distributor in the Netherlands.

The Respondent refers to earlier correspondence with the Complainants and claims that it has changed all text and images on its website pursuant to the Complainants' demands, including the removal of images provided by the Complainants' exclusive distributor in the Netherlands.

The Respondent further states that it meets the Oki Data criteria: "We use the site to only offer[ing] Jacuzzi's, all the Jacuzzi's we are offering on the site are original Jacuzzi's. In the text we also tell people that we have spas and Jacuzzi's in our showroom but on this site we are offering exclusive and only original Jacuzzi's. […] On the site you can find that we are offering Jacuzzi's at Fonteyn Outdoor Living Mall."

The Respondent further mentions that the disputed domain name is the Respondent's only domain name incorporating "Jacuzzi".

Finally, the Respondent notes that it is an honest company, using the disputed domain name in good faith.

6. Discussion and Findings

Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:

a. the disputed domain name is identical or confusingly similar to:

I. a trademark, or trade name, protected under Dutch law in which the complainant has rights; or

II. a personal name registered in the General Municipal Register ("gemeentelijke basisadministratie") of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the complainant undertakes public activities on a permanent basis; and

b. the respondent has no rights to or legitimate interests in the disputed domain name; and

c. the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

It is established case law that the Top-Level Domain ".nl" may be disregarded in assessing the similarity between the Trademarks on the one hand, and the disputed domain name on the other hand (e.g., Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

The Complainant Jacuzzi Inc. has shown that it owns the Trademarks, which are reproduced in full in the disputed domain name with the addition of the letter "s". This is an insignificant difference, and the Panel therefore finds that the disputed domain name is confusingly similar to the Trademarks, so that the first element of article 2.1 of the Regulation is met.

B. Rights or Legitimate Interests

Article 2.1(b) of the Regulations requires the Complainants to demonstrate that the Respondent has no rights to or legitimate interests in the disputed domain name. This condition is met if the Complainants make out a prima facie case that the Respondent has no such rights or interests, and the Respondent fails to rebut this (see, e.g., Technische Unie B.V. and Otra Information Services v. Technology Services Ltd., WIPO Case No. DNL2008-0002).

The Complainants allege that the Respondent has no rights or legitimate interests in the disputed domain name for the reasons listed above under Section 5.A. Noting in particular the Complainants' submissions regarding the Oki Data criteria, the Panel is satisfied that the Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

While the Panel considers that – although this has not been explicitly raised by the Respondent – for certain consumers the term "jacuzzi" may include a degree of descriptive connotation, it is relevant here that the Respondent itself was aware of the Trademarks. In fact, according to the Respondent, it purchased the disputed domain name with the very intention to sell "original Jacuzzi's".

The Respondent asserts a legitimate interest in the disputed domain name because it uses the domain name for the resale of the Complainants' products. The Respondent has made several changes to its website in response to the Complainants' objection, and claims compliance with the Oki Data criteria. Determining whether a reseller's offering may be characterized as bona fide for purposes of the UDRP, these criteria include, at minimum, the following:

1. the respondent must actually be offering the goods or services at issue;

2. the respondent must use the website to sell only the trademarked goods or services otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

3. the website must accurately describe the relationship between the respondent and the trademark owner; and

4. the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

Rooted in UDRP jurisprudence, these criteria have also found application under the Regulations. See, for instance, Seiko EPSON Corporation v. ANEM Computers / ANEM, WIPO Case No. DNL2010-0024; Maison Louis Latour v. Jos Beeres Wijnkoperij, WIPO Case No. DNL2011-0074; Xtralis Technologies Ltd. v. Secusense BV, WIPO Case No. DNL2014-0055; Dr. lng. h.c. F. Porsche AG v. Handelsprijzen.nl B.V., WIPO Case No. DNL2015-0051.

The Panel notes that the Respondent's website not only sells the trademarked goods but also invites visits to Respondent's showroom containing, as the website claims (translated from Dutch), over one thousand spa baths as well as Jacuzzi baths – not to mention the fact that the Respondent also trades in a diverse range of unrelated products.

Second, the Respondent's website fails to accurately describe the relationship between the Parties. The content of the website lacks a disclaimer and in fact conveys the impression that the Respondent is an authorized reseller of the Complainants' products.

Consequently, the Respondent does not comply with the Oki Data criteria and cannot be said to be using the disputed domain name for a bona fide offering of goods or services under of the Regulations.

Accordingly, the Panel holds that the requirement of article 2.1(b) of the Regulations is met.

C. Registered or Used in Bad Faith

Article 2.1(c) of the Regulations requires the Complainants to show that the disputed domain name was registered and/or is being used in bad faith.

Given the fact that the Respondent indicated that it registered the disputed domain name for the purpose of selling "original Jacuzzi's", it is obvious that it was then aware of the Trademarks.

The evidence submitted by the Complainants shows that the disputed domain name is being used by the Respondent to attract Internet users to the Respondent's website, for commercial gain, through the likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website, which circumstance constitutes evidence of bad faith in accordance with article 3.2 of the Regulations.

It is material in this regard that the Respondent's website encourages Internet users to visit the Respondent's showroom, where a large number of competing products are offered. (According to the Complaint, these competing products are also shown, alongside a number of JACUZZI-branded baths, on the picture shown on the homepage of the Respondent's website.) Noting the Respondent's failure to meet the Oki Data criteria, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

For these reasons the Panel finds that the requirement of 2.1(c) of the Regulations has also been met.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the disputed domain name <jacuzzis.nl> be transferred to Jacuzzi Inc.

Alfred Meijboom
Panelist
Date: October 18, 2016

¹ While the Oki Data case was decided under the Uniform Domain Name Resolution Policy ("UDRP"), and not the Regulations, given the similarities between the two policies, where applicable, .nl panels consider UDRP precedent relevant to proceedings under the Regulations.