The Complainant is Maria Guadalupe Arvizú Ramírez of Guadalajara, Jalisco, Mexico, represented by César Cámara Ortiz, Mexico.
The Respondent is Jennifer DeGrave, Water Tec of Tucson, Arizona, United States of America (the “USA”), represented by Quarles & Brady LLP, USA. 2. The Domain Name and Registrar
The disputed domain names and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2013. On August 20, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 27, 2013.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on August 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. The Respondent attempted to file a Response with the Center via e-mail on September 17, 2013, but the e-mail was rejected by the WIPO e-mail system for an unknown reason. The Center issued a communication on September 18, 2013 that the Respondent was noted in Default. The Respondent communicated with the Center advising of its attempt to file a Response by September 17, 2013, and as a result the Center withdrew its Notice of Respondent Default. Respondent re-filed its Response through the Center’s online submission facility on September 20, 2013.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 25, 2013. 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
The Complainant manufactures and distributes water treatment equipment to pump, purify, filter and transport water in Mexico. The Complainant’s business is identified under the trademark WATER TEC. In Mexico, the Complainant owns the following trademark registrations in association with “water supply and sanitary purposes” and “the sale of equipment and materials for water treatment”:
WATER TEC Design Mexican Registration No. 811117 filed February 26, 2002;
WATER TEC Mexican Registration No. 1340505 filed June 26, 2012;
WATER TEC Design Mexican Registration No. 1048751 filed May 12, 2008;
(the “Complainant’s WATER TEC Trademark”).
The Complainant claims a date of first use of the WATER TEC Design trademark (Registration No. 811117) since at least as early as February 5, 1995, although the related trademark was only filed in February 2002.
The Respondent registered the disputed domain name on June 16, 1998 and the disputed domain name on September 8, 2011.
The disputed domain name reverts to a website which features the Respondent’s business called Water Tec of Tuscon, Inc. The website at “www.” offers water treatment equipment and services in Arizona, Nevada and Mexico.
The disputed domain name reverts to a parking site from the Registrar GoD.
The Respondent, Jennifer DeGrave, of Water Tec of Tuscon, Inc., has operated a business offering water treatment equipment and services in the United States since 1967 and Mexico since 1986. In 1989 the Respondent adopted the WATER TEC trademark and logo (the “Respondent’s WATER TEC Trademark”).
The Respondent owns Arizona State Trademark registrations for the WATER TEC trademark as follows:
WATER TEC Arizona Registration No. 53750 dated April 13, 2009;
WATER TEC Design Arizona Registration No. 53748 dated April 13, 2009;
WATER TEC OF TUSCON Arizona Registration No. 447991 dated December 31, 2008;
WATER TEC OF TUSCON Arizona Registration No. 53749 dated April 4, 2009.
The Panel notes that the design marks registered by the Respondent and Complainant bear a striking degree of similarity. The Respondent claims to have used the WATER TEC Design trademark since 1989, six years prior to the Complainant’s claimed first use. 5. Parties’ Contentions A. Complainant Confusingly Similar
The Complainant submits that it owns registered trademark rights in WATER TEC, as particularized above in section 4.
The Complainant contends that the disputed domain names and are identical to the Complainant’s WATER TEC trademark except for the addition the word “Mexico” and the word “de” which means “of”. The addition of the geographical designation “Mexico” and “of Mexico” do not distinguish the disputed domain names from the Complainant’s WATER TEC Trademark. Accordingly, the Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered WATER TEC trademark. Rights and Legitimate interests
The Complainant submits that the Respondent does not have any rights or legitimate interests in the and domain names. The Complainant contends that the Respondent is not commonly known as Water Tec Mexico or Water Tec of Mexico. The Respondent does not own any trademark or service mark for WATER TEC in Mexico and was never authorized or licensed by the Complainant to the use the WATER TEC trademark in association with water treatment equipment or services in Mexico. The Complainant further submits that the Respondent has not used the disputed domain name in a bona fide offering of goods and services, as the disputed domain name reverts to a parking site. Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and is using the disputed domain names and in bad faith for the following reasons: (i) the Respondent registered and is using the disputed domains name for commercial gain, by creating a likelihood of confusion with the Complainant’s mark; and (ii) only the Complainant has the right to use the trademark WATER TEC in Mexico by virtue of its registrations. B. Respondent
The Respondent submits that it has held common law rights in the WATER TEC Trademark since 1989 and has Arizona State registered trademark rights in the mark WATER TEC since 2008. The Respondent submits that it has operated a business of providing water treatment equipment and services in the United States since 1967 and in Mexico since 1986.
The Respondent has filed copies of articles, advertisements and invoices showing use of the Respondent’s WATER TEC Trademark since 1994 in Arizona. The Respondent has also filed evidence showing use of the domain name since 2001 in association with water treatment equipment and services.
The Respondent contends that the WATER TEC Trademark and business is well-known in both Mexico and the United States, and as such the Respondent has rights and legitimate interests in and to the disputed domain name . Furthermore, the Respondent claims actual use of the disputed domain name in association with a bona fide offering of goods and services in association with their business of providing water treatment equipment and services.
The Respondent further claims to have registered the disputed domain name in 1998 four years prior to the Complainant’s Mexican trademark registration. Accordingly, the Respondent submits that there was no attempt to trade on the goodwill or interfere with the Complainant’s reputation in the WATER TEC Trademark or business because at the time the disputed domain name was registered the Complainant did not own a trademark registration.
With respect to the disputed domain name the Respondent claims to have registered the domain name to protect the name and its business reputation from cybersquatters attempting to register a domain name confusingly similar to its trade mark and trade name. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the 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. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have registered trademark rights in the mark WATER TEC by virtue of its trademark registrations namely Mexican Registration Nos. 1340505; 811117; and 1048751.
The Panel further finds that the disputed domain names and are confusingly similar to the Complainant’s registered trademark WATER TEC. The addition of a geographical designation such as “Mexico” or “of Mexico” does not serve to distinguish the disputed domain names from the Complainant’s registered trademark WATER TEC.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
On the evidentiary record as filed, the Panel is prepared to find that the Respondent has rights and legitimate interests in and to the disputed domain names and .
The Panel accepts the Respondent’s submission that the business Water Tec of Tuscon, Inc. began operating in 1967 and that it has continued its business under the trademark WATER TEC since 1989 (noting its Arizona trademark, registered in 2009, provides a first use in 1989, among other reasons). As such, the Respondent’s adoption of the WATER TEC trademarks significantly pre-dates the Complainant’s use of its marks, by at least six years.
Furthermore, the Panel accepts that the Respondent was likely unaware of the Complainant’s use of the WATER TEC Trademark and the Complainant’s business in Mexico when the Respondent registered the disputed domain name in 1998. The Panel can find no evidence that the Complainant’s use of the WATER TEC mark and associated reputation was such that in 1998 the Respondent would have been likely aware of the Complainant when it registered the disputed domain name . Furthermore, the Panel finds that the Respondent has used the WATER TEC trademark, and subsequently the disputed domain name in a bona fide offering of goods and services in association with the provision of water treatment equipment and services, evidenced by actual invoices and advertising materials dating back to 1994. This use includes the actual operation of an office in Monterrey, Mexico as early as 2004.
The Panel also accepts the Respondent’s submission that the disputed domain name was registered to protect the reputation and business of the Respondent’s Mexican operations. Though the Respondent has not directed the domain name to an active website at the time the Complaint was filed, the Panel is not prepared to find that this fact alone undermines a right or legitimate interest in the disputed domain name. The disputed domain name is a logical extension of the Respondent’s rights to the WATER TEC trademark as used by Respondent in Mexico. Furthermore, the Panel accepts the concept of trademark owners defensively registering a variety of versions of domain names which may be extensions of their registered trademarks in order to protect them from being registered by third parties (see Shoeby Franchise B.V. v. Shoebuy Inc. SHOEBUY.COM,WIPO Case No. D2010-2142).
Therefore, the Panel finds that the Complainant has not satisfied the requirement under Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In view of the findings on rights and legitimate interests above, the Panel does not need to make a finding on the third criteria of bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Date: October 9, 2013
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