Complainant is Water Pik, Inc. of Fort Collins, Colorado, United States of America, represented by Dorsey & Whitney, LLP, United States.
Respondent is Don Bankston of Temecula, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 22, 2010. On June 22, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On the same day, GoDaddy transmitted by email to the Center its verification response, confirming that Respondent is listed as the registrant, providing contact details, and other information pertaining to the registration. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 June 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 26, 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 for many years has sold oral healthcare products under the trademark WATERPIK. It owns several United States federal trademark registrations for WATERPIK marks, the earliest of which was issued in 1971. Complainant also uses the domain names and for its website that offers its oral health products.
The disputed domain name was registered in January, 2010 and is used in connection with a website that offers articles about oral health products, including those of the Complainant, and links to websites where the products of Complainant and its competitors can be purchased. Currently, the home page of the site states: “We are not affiliated with Water Pik in any way.” 5. Parties’ Contentions A. Complainant (1) The domain name is identical or confusingly similar to Complainant’s marks
Complainant or its predecessors have, for several decades used the mark WATERPIK or variants in connection a variety of goods and services, including oral health care products. Complainant owns several United States federal trademark registrations for the mark, the earliest of which was registered in 1971, as well as registrations in more than 35 countries worldwide.
Complainant also owns the domain names and and has used them since 1998 to offer its Waterpik products for sale.
Complainant has expended “enormous sums of time, effort and money” in advertising and promoting its Waterpik products. Its products have been recognized for their design and technology and Complainant is a leader in the field of oral healthcare products.
The domain name is essentially identical and confusingly similar to Complainant’s WATERPIK mark as it incorporates the mark in its entirety. The primary element of the domain name is “waterpik,” which is identical to Complainant’s mark. The addition of the generic term “reviews” is not sufficient to avoid confusion; nor is the addition of “.com” significant enough to avoid confusion. (2) Respondent has no rights to or legitimate interests in respect of the domain name
Complainant’s burden of proof on this element is light. Respondent cannot demonstrate any rights or legitimate interests in the domain name.
All of Complainant’s marks, and the domain names that Complainant uses for its website, were registered and being used before Respondent registered the domain name. Complainant’s rights in the WATERPIK mark predate any rights that Respondent could claim.
Respondent has not been authorized by Complainant to register the domain name or use the WATERPIK mark; Respondent is not a franchisee or affiliated with Complainant.
On information and belief, Respondent is not known by the domain name; instead, he is an individual named Don Bankston. Given the worldwide reputation of Complainant’s mark, Respondent will not be able to provide proof that a group of consumers who are likely to access the website associated with the domain name associate the name with Respondent rather than Complainant.
Respondent is not making a legitimate noncommercial or fair use of the domain name. The website associated with the domain name contains articles that relate to Complainant’s Waterpik products, apparently written by Respondent. The website also contains links to facilitate the purchase of Waterpik products and products offered by Complainant’s competitors. In addition, the website contains an “Ads by Google” section that, on information and belief, generates revenue for Respondent based on the users who click on the links in the advertisements. The website also contains a disclosure stating that “WaterpikR is compensated when a reader makes a purchase from an affiliated website.” Respondent’s commercial use does not constitute fair use. (3) Respondent has registered and is using the domain name in bad faith
From the content of Respondent’s website, which discusses Complainant’s Waterpik products and offers links to purchase those products and competing products, it is clear that Respondent had knowledge of Complainant and its WATERPIK mark when he registered the domain name.
It is inconceivable that Respondent did not register the domain name with the intent to trade on the good will of Complainant’s WATERPIK mark. Further, Complainant’s trademark registrations provide constructive notice of its rights in its marks.
Further, Complainant believes that Respondent generates revenue whenever visitors purchase products from the advertisements on Respondent’s website and is also compensated when visitors click on the Google ads. It appears that Respondent’s chances for increased revenue rise in direct proportion to the amount of traffic it attracts to its advertisements.
All of the foregoing evidences Respondent’s bad faith.
Further, in the articles contained on the website, Respondent uses the term “waterpik” to refer to not only Complainant’s oral irrigation device, but also to those of Complainant’s competitors. These uses dilute Complainant’s WATERPIK trademark.
Respondent’s offer to sell the domain name, in response to Complainant’s cease and desist letter, also demonstrates bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to prevail, Complainant must prove, as to the domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith. A. Identical or Confusingly Similar
Complainant has established its rights in the mark WATERPIK by virtue of the evidence of its United States federal trademark registrations.
The domain name is not identical to Complainant’s mark. However, it includes Complainant’s WATERPIK mark in its entirety and follows it with the generic term “reviews”. The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic.
Here, the addition of the word “reviews” does give a different connotation to the domain name; however, the dominant portion of the domain name remains the term “waterpik”, which is identical to Complainant’s mark. The Panel finds that the addition of the term “reviews” (ignoring the lack of spaces between the terms and the addition of the generic top-level domain “.com”, which are not relevant for these purposes), does nothing to effectively differentiate or distinguish the domain name from that mark.
Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of the domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you 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 (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 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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
On this record, it does not appear that Respondent has used the domain name in connection with a bona fide offering. As noted above, the domain name is confusingly similar to Complainant’s mark. Visitors to the site are presented with what appear to be links related to the products of Complainant and its competitors. Given Complainant’s long-time and extensive use of the WATERPIK mark, it is difficult to conceive of circumstances in which Respondent might make a bona fide offering, particularly of similar goods or services.
There is no evidence that Respondent, an individual, is or has been known by the name “Waterpik”. See Policy, paragraph 4(c)(ii).
The website associated with the domain name does contain some content relating to oral healthcare products generally. Accordingly, Respondent might potentially have been able to advance some argument or present some evidence that it was making a legitimate fair use of Complainant’s mark. By virtue of its default, Respondent has not advanced any argument.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
Complainant must establish that the domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its mark, which are well established, long predate Respondent’s registration and use of the domain name. Based on the content of the website associated with the domain name, Respondent appears to have been aware of Complainant’s WATERPIK mark and products. Respondent’s website does appear to use Complainant’s mark as a generic term for certain oral healthcare products; the Panel is mindful that Respondent might have been able to present evidence or make an argument that its registration and use of the domain name was not in bad faith. However, in the absence of any response, the Panel draws an adverse inference on this point.
Further, the Panel has already concluded that Respondent has no rights or legitimate interests in the domain name and that the use of the domain name was not in connection with a bona fide offering of goods or services.
Under these circumstances, the Panel finds that Complainant has established that Respondent has registered and is using the domain name in bad faith. 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: August 9, 2010
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