WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green Case No. D2010-0024 1. The Parties
Complainants are Zodiac Marine & Pool; Avon Inflatables Ltd; and Zodiac of North America Inc. of Paris, France; Llanelli, United Kingdom of Great Britain and Northern Ireland; and South Carolina, United States of America, respectively (herein after “Complainant”) represented by Cabinet Plasseraud, France.
Respondent is Mr. Tim Green of Bradford, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”). 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2010. On January 7, 2010, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On January 7, 2010, Network Solutions, LLC transmitted by email 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 January 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 8, 2010.
The Center appointed Ross Carson as the sole panelist in this matter on February 12, 2010. 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.
On January 22, 2010, Complainant forwarded an e-mail to the Center presenting additional facts and submissions relating to Complainant's allegation in the Complaint that content appearing on Respondent's website was copied from content displayed on Complainant's website. Complainant requested that the additional facts and submissions be taken into consideration by the Panel that will review the facts and decide the case. The additional facts relate to Notice of alleged Copyright Infringement by Respondent and the application of the DMCA Safe Harbor provisions by the company providing web hosting services to Respondent and Respondent taking the site down.
The Panel has no jurisdiction to decide copyright infringement. The Complaint and Annexes to the Complaint establish that Respondent has substantially copied some material appearing on Respondent's website directly from material appearing on Complainant's website. The additional submission relates to alleged copyright infringement which is beyond the jurisdiction of the Panel under the UDRP. For the reasons expressed above Complainant's e-mail of January 22, 2010 and the attachments thereto will not form part of the record in this proceeding. 4. Factual Background
Complainant Zodiac Marine & Pool is the holding company which owns the stock of Avon Inflatables Ltd. and Zodiac Of North America Inc. and manages the Intellectual property of all its subsidiaries. Avon Inflatables Ltd. is a British subsidiary of the holding company which commercializes nautical goods under the trademark AVON and is the owner of the domain name . Created in Bradford on Avon in 1959, Avon Inflatables Limited has produced over 200,000 inflatable and rigid inflatable boats sold under the AVON trademark since then.
Avon Inflatables Limited is recognized as a pioneer and a world leader and has a reputation for design, performance and product quality of inflatable and rigid inflatable boats. More than 50 years of producing first-class hand-built products has led to AVON inflatable boats being recognized as one of the best inflatable and rigid inflatable boat products in Europe and North America.
AVON inflatable boats include all aspects of leisure, commercial, rescue and defense needs and are used by many of the world's major navies, rescue organizations such as the Royal National Lifeboat Institution (RNLI) in the UK, the United States Coast Guard, commercial operators and environmental agencies such as Greenpeace. AVON inflatable boats are available globally from an international network of dealers, distributors and agents. The existing global network that sells AVON products includes 5 agents in France, 66 agents in the United Kingdom, 137 agents in the United States and 34 agents in Canada.
Zodiac Of North America Inc. is the American subsidiary of Zodiac Marine & Pool which commercializes nautical goods in America under various trademarks and notably the trademark AVON. The extensive and continuous use of the trademark AVON in relation with the Complainant's inflatables and rigid inflatables all over the world and more specifically in the United Kingdom, in France, in the United States and Canada has resulted in the trademark AVON distinguishing the Complainant's inflatables and rigid inflatables among the trade and public.
Complainant Zodiac Of North America Inc. was the owner of the disputed domain name which was registered on September 20, 1999 and used by Complainant until September 2009 when the domain name was not renewed by error. On or about November 3, 2009, without having expired, the disputed domain name was transferred to Respondent.
Respondent utilized a privacy service provided by the Registrar to hide the actual address and contact details of Respondent. In the Verification Response filed by the Registrar to the Request for Registrar Verification, the Registrar disclosed the registrant contact details and informed the Center that the address of Respondent was: Bradford, United Kingdom. 5. Parties' Contentions A. Complainant A.1 Identical or Confusingly Similar
Complainant states that as a result of it's extensive and continuous use of the trademark AVON in association with its goods all over the world and more specifically in the United Kingdom, in France, in the United States and Canada has generated a commercial goodwill in the trademark AVON, creating rights for the Complainant to stop unauthorized third parties from using a name or a trademark which is likely to lead to deception. Complainant further submits that many UDRP decisions have ruled that a party who establishes goodwill in a trademark may be considered to have rights in the trademark. See: American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A.,WIPO Case No. D2004-0473; The Highland Street Connection dba Highland Street Connection v. Chris McGrath; S.N.C. Jesta Fontainebleau v. Po Ser,WIPO Case No. D2009-1394.
Complainant further submits that the disputed domain name is almost identical to the trademark AVON since it is formed by the trademark and the generic word “marine”, which describes the quality; intended purpose of the goods in question. Therefore, the domain name is confusingly similar to the trademark in which the Complainant has rights. A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant states that it has no knowledge of any rights of Respondent in a trademark for or including AVON. Research conducted by Complainant on Saegis data base disclosed negative results with respect to Respondent owning any trademark rights in AVON or AVONMARINE. A.3 Registration in Bad Faith
Complainant submits that the disputed domain name was used by Complainant since its registration on September 20, 1999 until September 2009 to extensively promote its AVON inflatable and rigid inflatable boats throughout the world. Complainant states that the disputed domain name previously owned by one of the group did not expire but was reserved and transferred to Respondent after the date of expiry of the disputed domain name in September 2009 but before the disputed domain name had been deleted by the Registrar. The website activated by Respondent after the disputed domain name was transferred to Respondent contained information copied from the information Complainant used on it's homepage before the disputed domain name was transferred to Respondent.
Complainant submits that Respondent's intentional concealment of it's identity through the use of a privacy service provided by the Registrar, the fame and international recognition of AVON trademark prior to the transfer of the disputed domain name to Respondent coupled with copying material from Complainant's anterior website on Respondent's website demonstrates that Respondent knew about Complainant's trademark AVON prior to Respondent's acquisition of the disputed domain name by transfer. This demonstrates that the reservation and transfer of the disputed domain name to Respondent was done in bad faith. A.4 Used in Bad Faith
Complainant states that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of Complainant. Indeed, Zodiac of North America was the owner of the domain name until November 2009, as demonstrated by the domain name historic and archived websites (annex 8). The domain name was used to promote Complainant's AVON trade marketed products prior to transfer of the disputed domain name to Respondent.
Complainant further states that Respondent is using the disputed domain name in bad faith by intentionally attempting to attract Internet users to the website associated with the disputed domain name by creating a likelihood of confusion with complainant's AVON trademark as to the source, sponsorship, affiliation, or endorsement of its website. Complainant states that the main page of Respondent's website associated with the disputed domain name contains information copied from the information displayed on Complainant's website prior to the transfer of the disputed domain name to Respondent in the fall of 2009. Other pages of Respondent's website include links to credit loans and insurance in relation to boats. Respondent's inclusion of material on the webpage associated with the disputed domain name incorporating reference and pictures of Complainant's inflatable and rigid inflatable boats confirm Respondent's intent to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of it's website.
Complainant further states that Respondent claims that he is a part of AVON and has an international dealer network, in fraud. He also proposes links along the bottom of the page, where he earns compensation, tricking people into taking those links. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant's evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant is comprised of a group of related companies. May a group of related companies own trademark rights? Secondly, if the group of related companies do not own any registered trademarks, does the UDRP recognize unregistered or common law trademark rights?
Previous Panels have recognized that a group of related companies under unitary control may own trademark rights. See, Shell International Petroleum Company Ltd. v. Allen Jones,WIPO Case No. D2003-0821, “ …the Complainant asserts and provides evidence that ‘it is common for the local operating company in any particular country to be known by the name ‘SHELL', plus the name of the country': as is the case for the Complainant's registered domain name ”. “Nor does the Respondent refute the Complainant's contention that ‘Shell Nigeria' is a name in which the Royal Dutch / SHELL Group of Companies have built up a strong reputation or that the Complainant is one of the Royal Dutch/ SHELL Group Of Companies, as is apparent from the copies provided of the Complainant's website at ‘www.'”.
Complainant Zodiac Marine & Pool is the holding company which owns the stock of Avon Inflatables Ltd. and Zodiac Of North America Inc. and manages the Intellectual property of all its subsidiaries. Avon Inflatables Ltd. is a British subsidiary of the holding company which commercializes nautical goods under the trademark AVON and is the owner of the domain name . Created in Bradford on Avon in 1959, Avon Inflatables Limited has produced over 200,000 inflatables and rigid inflatable boats sold under the AVON trademark since then.
Avon Inflatables Limited is recognized as a pioneer and a world leader and has an enviable reputation for design, performance and product quality. More than 50 years of producing first-class hand-built products has led to AVON inflatable boats being recognized as one of the best inflatable and rigid inflatable boat products in Europe and North America.
AVON inflatable boats include all aspects of leisure, commercial, rescue and defense needs and are used by many of the world's major navies, rescue organizations such as the Royal National Lifeboat Institution (RNLI) in the UK, the United States Coast Guard, commercial operators and environmental agencies such as Greenpeace. AVON inflatable boats are available globally from an international network of dealers, distributors and agents. The existing global network that sells AVON products includes 5 agents in France, 66 agents in the United Kingdom, 137 agents in the USA and 34 agents in Canada.
Zodiac Of North America Inc. is the American subsidiary of Zodiac Marine & Pool which commercializes nautical goods in the United States of America through 137 agents under various trademarks and notably the trademark AVON.
The Complainant is a group of related companies building and selling AVON inflatable boats and rigid inflatable boats throughout the world having rights in the trademark AVON as an owner and licensees of the trademark AVON.
Many UDRP panels have found that both registered and unregistered trademark rights are encompassed within the term “…trademark or service mark in which the complainant has rights”; under paragraph 4(a)(i) of the Policy. See The Highland Street Connection dba Highland Street Foundation v. Chris McGrath,WIPO Case No. D2006-0516; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.
Common law trademark rights are created by use of a trademark in association with goods or the use of a service mark in the advertising of services which result in the goods or services being associated by the public or a segment of the public with the trademark or service mark. As approved by the Panel in Imperial College v. Christophe Dessimoz. supra; “… the Panel notices that common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself, no matter how strong or weak those trademark and service mark rights may be (Action Sports Videos v. Jeff Reynolds,WIPO Case No. D2001-1239)”.
As set forth in greater detail in section 4 above, Complainant has established extensive and continuous use of the trademark AVON since 1959 in association with the Complainant's inflatables and rigid inflatables all over the world and more specifically in the United Kingdom, in France, in the United States and Canada resulting in the trademark AVON distinguishing the Complainant's inflatables and rigid inflatables among the trade and public.
Complainant's trademark is the term AVON. The disputed domain name is comprised of Complainant's trademark AVON and the generic term “marine”. The combination of a descriptive or generic term with a well-known trademark does not overcome confusing similarity. See Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd. a/k/a Hangzhou Hi2000 InfoTech Inc., NAF Claim 141825 “it is well-established under the Policy that a domain name composed of a trade mark coupled with a generic term still is confusingly similar to the trademark”. The addition of “.com” is irrelevant. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (addition of “.com” to mark is irrelevant).
The Panel finds that Complainant has established that the disputed domain name is confusingly similar to Complainant's trademark AVON. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that Respondent has no rights or legitimate interests in respect of the domain name.
Based on the evidence, Respondent has not used the trademark AVON in association with any goods or services offered by Respondent.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant's registered trademark or any trademark confusingly similar thereto.
The disputed domain name is used by Respondent in association with a website featuring copies of Complainant's material relating to Complainant's AVON inflatable boats and rigid inflatable boats, such use is not a legitimate use of the disputed domain name. Additionally Respondent's website includes sponsored links promoting products offered by third parties relating to boats. The use of the domain name in dispute to promote products relating to boats for pay-per-click revenue is not a legitimate use of the disputed domain name.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is made, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy to rebut Complainant's prima facie showing.
The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith. C.1. Registered in Bad Faith
The disputed domain name was used by Complainant since its registration of on September 20, 1999 until September 2009 to promote its AVON inflatable and rigid inflatable boats throughout the world. Respondent reserved the disputed domain name after the date of expiry of the disputed domain name in September 2009 but before the disputed domain name had been deleted by the Registrar. The website activated by Respondent after the disputed domain name was transferred to Respondent contained information copied from the information Complainant used on it's homepage before the disputed domain name was transferred to Respondent.
Respondent's intentional concealment of it's identity through the use of a privacy service provided by the Registrar, the fame and international recognition of AVON trademark prior to the transfer of the disputed domain name to Respondent coupled with copying material from Complainant's anterior webpages on Respondent's website demonstrates that the Respondent knew about the existence of Complainant's trademark AVON prior to transfer of the registration of the disputed domain name.
The Panel finds that Respondent registered the disputed domain name in bad faith. C.2. Domain Name Used in Bad Faith
Paragraph 4(b) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website constitutes evidence of bad faith use of a domain name.
The main page of Respondent's website associated with the disputed domain name contains information copied from the information displayed on Complainant's website prior to the transfer of the disputed domain name to Respondent in the fall of 2009. Other pages of Respondent's website include pay-per-click links to credit loans and insurance in relation to boats. Respondent's inclusion of material on the webpage associated with the disputed domain name incorporating reference and pictures of Complainant's inflatable and rigid inflatable boats confirm Respondent's intent to confuse Internet users as to the source, sponsorship, affiliation, or endorsement of it's website. The inclusion of the apparent pay-per-click links supports the finding that the use of the disputed domain name was for income.
The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirements under paragraph 4(a)(iii) 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 name be transferred to the Complainants.
Ross Carson
Sole Panelist
Dated: February 24, 2010
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