WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Island Sky Corp. v. sky water Case No. D2010-0039 1. The Parties
Complainant is Island Sky Corp. of Hollywood, Florida, United States of America, represented by Christopher & Weisberg, P.A., United States of America.
Respondent is sky water of New York, New York, United States of America, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “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 11, 2010. On January 11, 2010, the Center transmitted by e-mail to Network Solutions, LLC. a request for registrar verification in connection with the Domain Name. On January 11, 2010, Network Solutions, LLC transmitted by e-mail to the Center its verification response, providing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 14, 2010. The Center verified that the Complaint together with the amendment to 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 proceeding commenced on January 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2010. The Response was filed with the Center on February 5, 2010.
The Center appointed Robert A. Badgley 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. 4. Factual Background
Complainant owns a registered trademark for SKYWATER. Annexed to the Complaint is the registration, on the United States Patent and Trademark Office's (the “USPTO”) Principal Register, for the SKYWATER mark, registration number 3,442,327. The registration date for this mark is June 3, 2008, with the first use in commerce three months earlier, March 27, 2008. Complainant uses the SKYWATER mark for its water treatment and desalination devices, namely, a gas-based refrigeration system comprised of a heat exchanger, compressors, evaporators, and fans that collect and condense moisture from the atmosphere to produce fresh water. Complainant alleges that the SKYWATER system “helps provide clean, healthy drinking water to people in over 30 countries around the world.”
Complainant has registered a similar word mark, SKY WATER, in the European Union, and that mark was registered on May 6, 2009. Complainant also has a pending application to register the mark SKYWATER and design – the design being a circle containing a green leaf and a blue water droplet positioned like a yin-yang symbol.
Respondent markets water purification systems, which are manufactured by an entity called Pure Health Solutions, Inc. (“PHSI”), to the eco-friendly consumer. Respondent alleges that it offers a system for purifying tap water, not collecting and condensing atmospheric moisture to produce water.
Respondent registered the Domain Name on June 30, 2008, 27 days after Complainant's mark was registered with the USPTO. At the website accessible via the Domain Name, the words SKY WATER appear prominently, and a circular green leaf-blue droplet logo similar to the one Complainant uses appears next to the words SKY WATER.
Complainant, through counsel, issued a cease-and-desist letter to Respondent on October 19, 2009, and followed up with a chaser letter on December 1, 2009. Respondent sent an e-mail to Complainant's counsel on December 1, 2009. The e-mail states in its entirety:
“The trademark says first use is 3-27-2008. My company has been doing business since October 2007. Also, your trademark is for the name of the device and similar devices. Sky Water is the registered DBA of my company. The machine I sell is called ‘Pure Water Technology, PW1M.' We are not infringing on you [sic] trademark.”
Complainant's counsel followed up with another demand letter on December 19, 2009, asserting that Complainant would file suit in federal court for trademark infringement, unfair competition, and other claims, if Respondent did not comply with Complainant's demands. This proceeding followed roughly three weeks later. 5. Parties' Contentions A. Complainant
According to the Complaint, Complainant's water-production system as described above is “precisely what is offered for sale at the offending domain.” Complainant describes the goods in question as “competing water treatment systems.”
Complainant also argues that the use of the Domain Name, coupled with the prominent words SKY WATER and the leaf-droplet design and the content of the website, “creates consumer confusion as to the source of goods and services offered or referred to at [Respondent's] website.” B. Respondent
Respondent denies that the water-related systems marketed by the parties are similar. According to Respondent, Complainant produces water from atmospheric sources, whereas Respondent purifies existing water.
Respondent also asserts that it has done business under the name Sky Water since October 2007, and registered that name as a DBA on October 22, 2007.
With respect to the leaf-drop logo, Respondent states:
“At the time of its creation, Sky Water asked the branding company for a logo that was consistent with the products and services being Go-Green, and environmentally friendly. In retrospect, this was a mistake. Water companies everywhere at the time became obsessed with Go-Green and wanted Go-Green literature and logos etc. Contrary to what the complainant would charge carelessly and without any backing, the logo is completely original. Unfortunately, the idea behind it became over-used. Consider the following. Most water companies have blue in the logo. As a matter of fact, green is also a very common color in water company logos. And considering the time around which the logos were created, it is really not a far cry that 2 companies would both choose blue and green. What other colors make so much sense at the time? So what are we left with? They are both round? In fact, the Sky Water logo is very professionally done. It displays major original differences like a ‘Ying Yang' shape (as opposed to a leaf covering a blue globe), displays the ‘S' in the middle.” 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights in the mark SKYWATER through registration and use. The Domain Name incorporates the mark and adds the word “systems.” In the Panel's view, the addition of the word “systems” does not diminish the confusing similarity between the mark and the Domain Name. This is because the word “systems” actually partly describes what Complainant sells under the mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as he does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001).
The Panel is unable to conclude from this record that Respondent lacks rights or legitimate interests in respect to the Domain Name. This finding is based on the mark itself, the timing of the parties' respective uses of the term “sky water”, the limited record before the Panel, and the respective businesses of the parties.
On the spectrum of inherent distinctiveness, the trademark SKYWATER to identify a system that produces water from the atmosphere in this Panel's view can hardly be regarded as fanciful or even arbitrary. It is, for this Panel rather, suggestive at best and even arguably descriptive. This does not of course negate Complainant's right to enforce its registered trademark rights, but where a respondent's use of a disputed domain name relates to the descriptive nature of a term corresponding to a trademark, it can undermine an allegation in a streamlined proceeding under the Policy that Respondent was aware of the mark when it registered the Domain Name.
Respondent has made no such admission here, and it is not implausible under the circumstances for Respondent to have adopted the term “sky water” as a DBA or a domain name without having any awareness of Complainant or its goods. This conclusion is reinforced by the fact that the Domain Name was registered only three months after Complainant first used the SKYWATER mark in commerce and less than a month after the USPTO registered the mark. In the Panel's view, constructive notice by itself does not form the basis for a bad faith finding under the Policy. In addition, Respondent appears to have been using the words “sky water” in conjunction with its business since October 2007 (and this is not contested by the Complainant).
Similar considerations bear on the question of Respondent's use of a blue droplet-green leaf circular logo that somewhat resembles Complainant's unregistered own logo. When nature and environmentalism are themes embraced by a company marketing a water-related product, the images of a green leaf and a blue droplet leap fairly readily to mind. Respondent's explanation that it outsourced the design of its logo and, by coincidence, the logo somewhat resembles that used by Complainant is not so far-fetched as to be discredited on its face.
The Panel believes it conceivable that there could well be consumer confusion as between the source of goods offered via the Domain Name. As far as the record here reveals, however, the water-related systems offered by the parties here are not strictly, as Complainant asserts, in direct competition with one another. As the Panel understands it, Complainant produces water from the atmosphere and Respondent purifies existing water.
The issues raised in the Complaint and Response are best left to a court of law, which can undertake a more searching and nuanced analysis of the evidence. A judicial forum is also better equipped to test the credibility of the parties' assertions through discovery, authentication, and cross-examination. By contrast, the Panel here is limited to the record evidence as presented, as well as the Panel's judgment regarding the reliability of such evidence and the inferences to be drawn therefrom.
This is not a clear case of cybersquatting, which is the type of case the Policy is intended to address.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has not been satisfied. C. Registered and Used in Bad Faith
For the reasons discussed above under the “rights or legitimate interests” head, the Panel cannot conclude that Respondent has registered and is using the Domain Name in bad faith under the Policy. A court of law is the proper forum to sort out this clash of alleged trademark rights.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has not been satisfied. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Dated: February 25, 2010
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