The Complainant is Aqua Gear, Inc. of West Palm Beach, Florida, United States of America, represented internally.
The Respondent is RareNames, WebReg of Waltham, Massachusetts, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 12, 2011, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On August 13, 2011, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 August 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 5, 2011. The Response was filed with the Center on September 5, 2011.
The Center appointed Mark Partridge as the sole panelist in this matter on September 21, 2011. 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.
The original filing by Complainant totaled over 6,600 words which is significantly higher than the 5,000 word limited imposed by the Supplemental Rules therefore Complaint is non-compliant in this regard. The Panel’s options are (i) to reject the Complaint out of hand; (ii) to remit it back to Complainant to render it compliant (i.e. reduce the word count); or (iii) to ignore the deficiency and proceed to a decision. See, Sóciéte des Technologies de l’Aluminium du Saguena Inc. v. Success Inc.,WIPO Case No. D2008-0268. In this case the Panel will ignore the deficiency.
On September 21, 2011, after this Panel had been appointed, Complainant in this case submitted a Supplemental filing. ICANN Rules 10 (d) give discretion to the Panelist on whether to consider any additional submissions. The Supplemental filing submitted by Complainant totals 7,700 words. Given that the original Complaint was in violation of the word limit imposed by the Supplemental Rules the Panel has decided that Complainant’s excessively wordy response will not be considered and this decision will be based on the Complaint and Response in this matter.
Subsequent submissions by the parties are not allowed by the Rules without leave of the Panel. Leave is normally granted if there is good cause. Good cause has not been shown here and therefore the additional submissions will not be considered. 4. Factual Background
Complainant registered the domain name on September 14, 1999.
Complainant filed a trademark application for AQUA GEAR and Design on August 6, 2001, which was eventually abandoned on 09/25/05. The first use date for the mark was 08/01/92.
Complainant owns a trademark registration for AQUAGEAR Registration Number, 3,814,395 which was applied for on November 24, 2009 and registered on July 6, 2010.
The domain name was registered by the Respondent on May 1, 2002.
Respondent was aware of Complainant’s trademark application at the time it registered the domain name. 5. Parties’ Contentions A. Complainant
Complainant makes the following contentions:
Complainant established common law rights to the AQUA GEAR Mark in 1992 when it began operation as a mail order business, through national print based advertising, by distributing catalogs, and by selling merchandise nationwide.
Complainant is and was, at the time of Respondent's domain registration, known by customers, vendors, and the swimming and water-exercise communities as “Aqua Gear”, “Aqua-Gear”, “AquaGear”, “AquaGear, Inc”, Aqua-Gear, Inc”, and “Aqua Gear, Inc”, and has continually operated a mail order business since 1992 and an e-commerce website since 1995.
Complainant registered and began using the domain name in 1999.
Complainant has established a solid customer base of repeat customers through Complainant's offering of over-the-top customer service, industry-expert sales associates, and ridiculously fast shipping, which sets us apart from the competition.
The AQUA GEAR Mark is famous within the Swimming, Water Exercise, and Water Therapy Communities, and is well-known to our market base in the US and abroad. Aqua Gear has shipped tens of thousands of orders to various destinations including all 50 states, and internationally to almost every country with a postal system.
The disputed domain, is nearly identical to Complainant's federal trademark, current on-line store “www.>”, and Complainant's common law and state service mark rights to AQUA GEAR.
Complainant's Customers have been confused when landing on Respondent's site while trying to reach Complainant, believing that Complainant had gone out of business.
Respondent has shown no intention of using the domain name in conjunction with a bona fide offering of goods or services.
Respondent is in the business of selling domain names and monetizing traffic that “accidentally” lands on their domain names while users are attempting to access a different site. Respondent is not in the business of operating websites which offer bona fide goods or services.
Respondent is not known as “Aqua Gear” or “”, nor does Respondent hold any trademarks in those names.
Respondent is not making a legitimate non-commercial use of the domain. Respondent's use of the domain name is commercial in nature, and generates revenue for Respondent through ads when Complainant's customers misspell Complainant's URL when trying to reach the Complainant's website.
Respondent has shown no intention of using the domain in conjunction with a bona fide offering of goods or services. The website at “www.” has always been a simple cookie-cutter template (shared by all of Respondent's domain names for sale) which simply states that the domain name is for sale, and shows Cost-Per-Click (CPC) ads, many of which link to sites that compete with Complainant.
“Aqua gear” is not a generic or descriptive term. Both variations have been successfully registered on the Principal Register with the USPTO. The USPTO does not register trademarks that are generic or descriptive; thus “aqua gear” is not a generic or descriptive term, since it would then not qualify for Federal Registration.
Respondent has engaged in a pattern of such conduct; as demonstrated by numerous UDRP disputes against them, the majority of which were ruled for Complainant. B. Respondent
Respondent makes the following contentions:
Complainant has waited nine (9) years to assert its purported rights in the Disputed Domain Name.
Complainant does not have exclusive rights to the phrase “aqua gear,” which is not a “coined” or unique phrase, but rather is a common phrase widely used by numerous parties. Respondent first registered the Disputed Domain Name more than nine (9) years ago when it became available for anyone to register. Respondent selected the Disputed Domain Name because it incorporates two short, common words in a common phrase to which no single party has exclusive rights.
Respondent had no knowledge of Complainant’s purported mark, and did not register the Disputed Domain Name to sell it to Complainant, to disrupt its business, to prevent it from acquiring a domain name reflecting its trademark, or to confuse users.
Respondent did not register the Disputed Domain Name because it incorporates Complainant’s mark, or any mark. Respondent registered the Disputed Domain Name because it comprises a common phrase. Such registration is entirely permissible under the UDRP and under trademark law.
It is well-established that the public offer for sale of a domain name comprising a common word or words does not constitute bad faith under the Policy but, instead, is a bona fide business activity that establishes the Respondent’s legitimate interest.
Respondent registers domain names that become available for registration through expiration and deletion. Respondent’s policy is to register and maintain only domain names that incorporate common words or phrases, descriptive terms, and/or words as to which it considers no single party has exclusive rights.
On the “www.” website, Respondent offers information and links relating to the descriptive nature of the phrase, “aqua gear”, such as topics relating to water sports, surfing and scuba gear.
Complainant does not have exclusive rights to the phrase “aqua gear,” which is a common phrase that is the subject of diverse third party use.
Respondent has rights and legitimate interest in the domain because “aqua gear” is no more than a common, descriptive term.
Complainant made no effort to directly contact Respondent about the Disputed Domain Name prior to filing the Complaint, using Respondent’s Trademark Complaint Procedure or otherwise (aside from the indirect negotiation by “Candace”), so the first notice Respondent received of the dispute was on August 22, 2011, when it finally received a copy of the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
Respondent does not dispute that the mark AQUA GEAR and the domain name are essentially identical. The Complainant has a valid trademark registration and has provided evidence of use of the mark since 1992. Given these facts the Complainant has established the domain name is confusingly similar to its trademark.
As a result the Panel finds that the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the following three non-exclusive circumstances which may demonstrate Respondent's rights or legitimate interests in the Disputed Domain Name:
(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.
As to the circumstances under paragraph 4(c)(i) of the Policy, Complainant has not consented to the Respondent's use of the Disputed Domain Name, which incorporates the Complainant's trademark AQUA GEAR.
Respondent is using the Disputed Domain Name by providing links from its website to multiple other websites concerning competitive businesses, which in the Panel's view shows that Respondent was well aware of Complainant as well as of its products and services, and, instead of making a bona fide use of the Disputed Domain Name, instead intends to trade on the fame and goodwill of Complainant and its trademarks.
Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the AQUA GEAR marks. (See Telstra Corp. Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 13, 2000) (respondent had no rights or legitimate interests to use domain name because respondent was not licensed or otherwise permitted to use complainant's trademark); Alta Vista Company v. Jean-Daniel Gamanche, Case No. FA 95249 (NAF August 17, 2000) (respondent was not licensed to use complainant's mark and therefore had no rights or legitimate interests in the domain name).
Respondent is not generally known by the Disputed Domain Name, and has not acquired any trademark or service mark rights in that name or mark. (See Gallup v. Amish Country Store, Case No. FA 96209 (NAF January 23, 2001) (respondent does not have rights in domain name incorporating another's mark when respondent is not known by that mark). Instead, Respondent uses the Disputed Domain Name in connection with a website that contains links to websites offering services of Aqua Gear’s competitors.
Thus, Respondent has registered and is using the Disputed Domain Name to divert and siphon off visitors seeking Complainant's website. Respondent's use of the Disputed Domain Name for such a purpose is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. (See Nat'l Ass'n of Professional Baseball Leagues v. Zuccarini,WIPO Case No. D2002-1011 (January 21, 2003).
Consequently, the Complaint succeeds in relation to the second element of the Policy. C. Registered and Used in Bad Faith
The Panel accepts Complainant’s submission that at the date of registration of the Disputed Domain Name being May 1, 2002, Complainant’s AQUA GEAR mark was well established as a consequence of use in the Complainant’s own website at since 1999, and its advertising of services since 1992. Respondent, through the Declaration of Erik S. Zilinek, gives contradictory statements regarding its knowledge of Complainant’s trademark rights. For example, in Paragraphs 8 and 9 of Mr. Zilinek’s Affidavit, he stated (emphasis added):
Paragraph 8: The first notice we received of the dispute was on August 16, 2011, when we received Annex B of the Complaint. On August 22, 2011, we received the remainder of the Complaint as well as formal notification of the present proceeding.
Paragraph 9. Prior to that time, we were unaware of Complainant’s asserted trademark rights.
But three paragraphs later Mr. Zilinek stated (emphasis added):
Paragraph 12. We use our proprietary technology to regularly screen acquired domain names for, among other things: conflicts with exclusively-owned, descriptive, or fanciful trademarks registered at, among other places, the USPTO; and significant market presence - at the time we register a domain name - on the Internet of unregistered trademarks.
Paragraph 13. Upon our acquisition of the subject domain name, the results for a query on “aqua gear” revealed Complainant’s pending and subsequently abandoned application before the USPTO. However, in cross-referencing Complainant, we discovered no reasonably identifiable presence on the Internet.
Respondent claims it owns proprietary technology to screen acquired domain names so the Panel will assume that it was aware of Complainant’s asserted trademark rights at the time of registration. The Panel used the Wayback Machine to determine the web presence of Complainant at the time the Disputed Domain Name was registered. A snap shot of the website date April 5, 2002, shows an active and robust website at “www.” being operated by Complainant. The Panel finds Respondent’s assertion that it was unable to find any “reasonably identifiable presence” of the Complaint not credible. Moreover, presence on the Internet is not required to establish rights. Respondent knew of Complainant’s pending application and should have investigated further. Its failure to do so conflicts with the picture it attempts to paint of a good faith user.
The Panel must be satisfied that a domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 our documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
Under paragraph 4(b)(iv) of the Policy, bad faith can be shown by circumstances indicating that Respondent deliberately used the domain name for commercial gain to divert Internet users based on a likelihood of confusion with the Complainant's mark. Here, it appears that the Disputed Domain Name is deliberately used for commercial gain to attract Internet users to Respondent's website based on a likelihood of confusion with Complainant's AQUA GEAR mark. The Disputed Domain Name offers links to services directly competing with Complainant's services. Such use of the AQUA GEAR mark is a bad faith use in accordance with the Policy paragraph 4(b)(iv). See MasterCard International Incorporated v. ZJ,WIPO Case No. D2007-0687 (finding the domain which is associated with a website carrying at least one hyperlink to a competitor of MasterCard is proof of bad faith).
Moreover, Respondent has an established pattern of registering domain names comprised of other parties' trademarks, which is further evidence of Respondent's bad faith. In at least three recent decisions, UDRP panels have ordered Respondent to transfer domain names which contained an additional non-distinctive, descriptive or generic term combined with a third party's trademark. See, e.g. Limco, Inc. and Limited Stores Inc. v Rarenames, NAF Claim No. 99693 (ordering the transfer of the domain name ); DLJ Long Term Investment Corp. v. B aka Buy This Domain aka S aka S aka RareNames/WebReg, NAF File No 144646 (ordering the transfer of , and domain names).
Such a pattern of behavior is further evidence of Respondent's bad faith in registering and using a domain name that is confusingly similar to Complainant’s mark. SeeJuventus F.C. SpA. v. Mythos Srl,WIPO Case No. D2001-0583 (June 20, 2001) (pattern of registering domain names comprised of others' marks is evidence of bad faith); Toyota Jidosha Kabushiki Kaisha d/b/a/ Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802.
The admissions of Respondent confirm that Respondent registered and used the Disputed Domain Name with knowledge of Complainant’s application for federal trademark registration. Respondent proceeded recklessly in the face of that knowledge. At the time of that application, Complainant had been using the trademark mark for many years. Such conduct leads to the conclusion that it is more likely than not that Respondent registered and used the Disputed Domain Name in a bad faith attempt to trade on an established trademark for the purpose of gaining advertising revenue by diverting Internet users at Complainant’s expense.
The Panel therefore concludes that Respondent has registered and is using the Disputed Domain Name in bad faith in violation 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 Disputed Domain Name be transferred to the Complainant.
Mark Partridge
Sole Panelist
Dated: October 25, 2011
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