WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hayward Industries, Inc. v. WebQ, Inc. Case No. D2009-1493 1. The Parties
Complainant is Hayward Industries, Inc., of Elizabeth, New Jersey, United States of America, represented by McCarter & English, LLP, United States of America.
Respondent is WebQ, Inc., of Modesto, California, United States of America; represented by Law Offices of David M. Dingeman Texas, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 4, 2009. On November 4, 2009, the Center transmitted by e-mail to F a request for registrar verification in connection with the disputed domain names. On November 4, 2009, F transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 November 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2009. The Response was filed with the Center on December 9, 2009.1
The Center appointed Douglas M. Isenberg, W. Scott Blackmer and David H. Bernstein as panelists in this matter on January 14, 2010. The Panel finds that it was properly constituted. Each member of 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 states that it “manufactures and sells a full line of state-of-the-art swimming pool controls, filters, heaters, pumps, valves, and automatic pool cleaners, as well as other related products, worldwide under a variety of trademarks including HAYWARD” and that Complainant “and its subsidiaries have continuously used the trademark HAYWARD for swimming pool products sold in interstate commerce throughout the United States since June 1956.” In support thereof, Complainant provided a copy of its certificate of registration for United States (“U.S.”) Reg. No. 1,058,211 at the U.S. Patent and Trademark Office for the mark HAYWARD, owned by Complainant, for use in connection with “pumps and water circulating systems for swimming pools” (first used in commerce June 1956); “plumbing fixtures, filters, strainers and electrical lights, components, and fittings therefor for swimming pools” (first used in commerce June 1956); and “plastic valves, fittings, pipe and accessories for swimming pools” (first used in commerce January 15, 1965). This mark was registered on February 8, 1977.
Complainant also states that it is the owner of trademark registrations for HAYWARD in Algeria, Austria, Benelux, Brazil, Canada, People's Republic of China, Denmark, Egypt, European Community, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Mexico, Portugal, Spain, Sweden, Switzerland and the United Kingdom.
Collectively, Complainant's trademark registrations described above are hereafter referred to as the “HAYWARD Trademark.”
WhoIs records provided by Complainant show that the domain name was created on July 26, 1995, and the domain name was created on August 14, 2004. However, Complainant states that “Respondent is not the original registrant of the domain name . From July 26, 1995 until at least July 26, 2006, the domain name was registered by Hayward & Associates, Inc. (‘Hayward & Associates'), a Georgia Corporation engaged in various aspects of the information technology industry. The Respondent acquired the rights to the domain name from Hayward & Associates between July 26, 2006 and August 1, 2006.” Respondent states that it “acquired this domain name on or about July 31, 2006.”
Respondent states that “Respondent, Chad Wright, aka WebQ, Inc. is in the business of providing pay-per-click search engines offered through his geographical domain names” and that “Respondent also owns generic domain names…” Respondent paid over $20,000 for the domain name .
Complainant states that it sent a demand letter to Respondent regarding the disputed domain name on August 1, 2006, a copy of which Complainant provided as an annex to the Complaint. In a response, also included as an annex to the Complaint, Respondent's counsel wrote in a letter dated August 4, 2006, that Respondent “is the registrant of geographically designated domain names” and that Respondent would “prevail in any legal dispute over the geographical name …”
Complainant states that Respondent offered the domain name for sale via an online auction, ending November 4, 2009, with an “opening minimum bid” of $100,000.00, as shown in an e-mail from SnapNames dated October 29, 2009.
Complainant states that “[t]he main page of the “www.” web site is a typical minimalist site set up by cybersquatters for the sole purpose of generating click-through revenue. Most notably, upon entering ‘hayward' in the provided search bar, the user is inundated with sponsored links to web sites that provide access to the products of [Complainant's] direct competitors.” Complainant further states that although the domain name “no longer resolves to an active page,” a previous website associated with that domain name, included as an annex to the Complaint, included links to Complainant's competitors. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The domain names and are identical or confusingly to the HAYWARD Trademark because the top-level domain “.com” is “without legal significance” for purposes of the Policy and because “[t]he addition of the prefix ‘www' is equally without significance as many panels have concluded that domain names consisting of the prefix ‘www' affixed to a trademark are substantially similar to the relevant trademark.”
- Respondent has no rights or legitimate interests in respect of the domain names and because (i) prior to notice from Complainant, Respondent had not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services given that “these two domain names have been utilized by the Respondent to generate click-through income by linking to the websites of paid sponsors, many of which sell [Complainant's] pool products alongside the same types of pool products manufactured by [Complainant's]competitors”; (ii) Respondent has never been known as “Hayward” given that “all indications are that [Respondent] uses and is commonly known by the name ‘WebQ'; and (iii) Respondent is not making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, given that “Respondent instead has consistently attempted to profit from its unauthorized registration and use of the domain names and .”
- The disputed domain names have been registered and used in bad faith because, despite a statement from Respondent's counsel that Respondent's registration and use of the domain name was in connection with Respondent's “geographically designated domain names,” the domain name has never been used in connection with a website such as other such domain names registered by Respondent. Complainant observes, for example, that Respondent uses the domain names , , and in connection with websites that contain links to information about cities of the same names in California, “mostly relating to local real estate.” However, Complainant states that “Respondent's contains none of these common features” and “is therefore not consistent with the purpose stated by counsel on August 1, 2006. As several years have now passed since the Respondent acquired and the web site still fails to resemble these others, it is obvious that the Respondent never intended to use in the same manner and instead planned to use the web site to exploit Internet user confusion for financial gain all along.” As stated above, Complainant observes that the domain name is used in connection with a website that leads to “sponsored links to web sites that provide access to the products of [Complainant's] direct competitors” and that the domain name was previously used “in a similar fashion.” Further, Complainant states that actual confusion has occurred, given that “[a] number of pool-related websites” incorrectly link to rather than to, presumably, one of Complainant's website using the domain names , , , , , or . B. Respondent
Respondent contends, in relevant part, as follows:
- Respondent has rights or legitimate interests in respect of the disputed domain names because “Hawyard is a geographical mark” and Respondent has acquired “other geographical domain names… over the past years.” Further, “[t]he word ‘Hayward' is used in a wide variety of meanings and uses,” including “as a city name, lake name, school name, proper name, airport name and company name,” according to Google search results. Further, “pay-per-click” sites such as those offered by Respondent constitute a bona fide offering of services including here, given that “Respondent is not ‘passing off' as Complainant.”
- Respondent did not register or use the disputed domain names in bad faith because “Respondent never knew nor suspected that a commercial entity could claim exclusive rights in a geographical term ‘Hayward' when the domain name was registered. Furthermore, Complainant has not shown famous rights in the name such as a direct relationship with Respondent, or a wide reputation of or extensive publicity in connection with Complainant's trade name or trademarks.” In addition, “[w]hile Respondent has… developed his geographical domain names over time, the fact that various geographical domain names are not developed yet is not significant.” Also, “Complainant has manipulated the home page to produce their desired results.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain names are 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 names; and (iii) the disputed domain names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the HAYWARD Trademark, and Respondent does not dispute the validity of the HAYWARD Trademark.
As to whether the disputed domain names are identical or confusingly similar to the HAYWARD Trademark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “hayward” and “wwwhayward”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose.
It is self-evident that the disputed domain name is identical to the HAYWARD Trademark. See, e.g., Regan Campbell Ward-McCann v. Site Services International, Richard Sorensen,WIPO Case No. D2008-0386 (finding the domain name identical to the trademark RCW “without the need for elaboration”). As for the disputed domain name , Complainant correctly points out that many panels have disregarded the inclusion of the characters “www” in a second-level domain given that these characters are typically used in a third-level domain to present a website's uniform resource locator. See, e.g., Hoffmann-La Roche Inc. v. Andrew Miller,WIPO Case No. D2008-1345 (finding the domain name , inter alia, confusingly similar to the trademark XENICAL). Finally, it is significant that Respondent does not dispute that either of the disputed domain names is identical or confusingly similar to the HAYWARD Trademark.
Accordingly, each of the disputed domain names is confusingly similar to Complainant's HAYWARD Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Respondent is correct in its observations that the word “Hayward” is the name of a city in California (and also has other definitions) and that pay-per-click (“PPC”) websites do not necessarily indicate that a Respondent lacks rights or legitimate interests. Indeed, the Panel agrees with the language cited by Respondent from McMullen Argus Publishing Inc. v. Moniker Privacy Services/Jay Bean, MDNH, Inc.,WIPO Case No. D2007-0676, that “pay-per-click websites are not in and of themselves unlawful or illegitimate.”
However, unlike the complainant in the McMullen Argus Publishing case, the Complainant here has done “more than just show pay-per-click use.” Importantly, Complainant has shown that the websites associated with the disputed domain names in this case contain (or contained) pages with links offering or leading to pages with links offering goods or services that are competitive with the goods and services offered by Complainant under its HAYWARD Trademark. Clearly, the disputed domain names are therefore not being used solely in connection with their geographic meaning. “It is by now well established that PPC parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate non-commercial or fair use pursuant to paragraph 4(c)(iii).” Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598. See also mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141 (“Respondent's domain names appear to be used for their trademark value and not for any descriptive value in the names.”).
Respondent has not shown that it has used, or made demonstrable preparations to use, either of the disputed domain names in connection with websites about the city of Hayward, despite a statement from Respondent's counsel more than three years ago indicating that was a part of Respondent's portfolio of domain names that correspond to geographical names in the same region of California. While Respondent was not obligated to immediately use either of the disputed domain names in connection with geographic-specific websites, Respondent should not have parked the domain name in the interim with a page that improperly profited off of the value of Complainant's trademark with PPC revenue. Moreover, that Respondent has a portfolio of other geographic-specific websites and has not used either of the disputed domain names in a similar manner for a reasonable period of time renders Respondent's arguments unbelievable with respect to the disputed domain names.
Accordingly, the Panel is convinced that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined in part by considering the four (non-exhaustive) examples of bad faith set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's 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 registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
In this case, Complainant specifically alleges that bad faith exists pursuant to paragraph 4(b)(iii). However, the Panel is not convinced that Respondent is a “competitor” of Complainant, as required by that paragraph of the Policy. Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (“a competitor for purposes of the Policy is a person or entity in competition with a complainant for the provision of goods or services, and not merely any person or entity with an interest oppositional to that of a mark holder”).
Nevertheless, decisions under the Policy frequently have found bad faith where a Respondent has used a domain name in connection with a PPC site that contains or leads to pages that contain links to a complainant's competitors. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy Inc.,WIPO Case No. D2005-0850 (“In some cases, particularly where the links on such a page are not competitive with or disruptive to a relevant trademark owner, or confusing to visitors, such activity may not violate the Policy. However, where, as here, the links are apparently to competitive websites, especially with no indication that the links are not sponsored by or affiliated with the relevant trademark owner, then such activity indicates bad faith under the Policy.”)
In addition, although Respondent argues that Complainant has not shown “a wide reputation of or extensive publicity in connection with Complainant's trade name or trademarks,” Respondent bears complete responsibility for how the disputed domain names were used and could have taken, but failed to take, steps to ensure that they were not used in connection with goods or services competitive with those offered under the HAYWARD Trademark. See, e.g., Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. Notably, the Panel has independently observed that the most prominent organic search result for “hayward” leads to a website for Complainant (at www.), so, as in Mobile Communication Service, “even a cursory search [by Respondent] on search engines like Yahoo! and Google would have shown that [this word] is a trademark.”
Finally, the Panel finds it informative – though not decisive – that, according to documents in the record, Respondent purchased the domain name for USD$20,000 and was attempting to sell it for at least USD$100,000. These figures would seem to indicate that Respondent saw some value in this domain name for reasons other than its existence as the name of the city of Hayward, California – with a population of only about 150,000 people, according to the city's website at – and for purposes other than as a PPC parking page (which, in the normal course, would not be expected to earn a return to justify such a rich investment).
In light of the above, the Panel is convinced that Complainant has proven the third element of the Policy. 7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Douglas M. Isenberg
Presiding Panelist
W. Scott Blackmer
Panelist
David H. Bernstein
Panelist
Dated: January 27, 2010
1 Although the Center received the Response on December 9, 2009, Geneva time, the Respondent sent the response on December 8, 2009, in its time zone, and thus the Panel treats the Response as having been timely filed. Denver Newspaper Agency v. J LLC, NAF File No. 1282148.
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