The Complainant is The Pool Factory, Inc. of New York, New York, United States of America (“United States”), represented by Venable LLP, United States.
The Respondent is Pool Factory QC of St-Nicolas, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2015, 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.
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 the Respondent of the Complaint, and the proceedings commenced on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 29, 2015. 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 Panel notes that in the Complaint the Respondent is named as “TD Domain Names” with a similar address and email address to that of the Respondent, Pool Factory QC. Based on the relevant WhoIs search and verification information provided by the Registrar, the Panel is satisfied that the registrant of the disputed domain name, and therefore the appropriate Respondent, is Pool Factory QC. The Panel notes that the written Notification of Complaint in this matter was correctly addressed by the Center to Pool Factory QC. The Panel further notes that the electronic copy of the “Notification of the Complaint and Commencement of the Administrative Proceeding”, including the Complaint and attachments, was sent to the Respondent at the email address as shown in the WhoIs and confirmed by the Registrar. 4. Factual Background
The Complainant is a corporation organized under the laws of New York, United States.
The Complainant is the owner of the following United States registered trademarks:
(1) United States trademark number 4,211,485 for a design plus the words THE POOL FACTORYfiled on September 19, 2011 in International Class 35. The registration includes the disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘THE POOL FACTORY’ APART FROM THE MARK AS SHOWN.”
(2) United States trademark number 4,612,888 for THE POOL FACTORY filed on January 27, 2014 in International Class 35, specifying first use in commerce on March 2, 1993.
The disputed domain name was registered on July 12, 2004.
The Complainant has submitted evidence that, on February 23, 2015, the disputed domain name resolved to a website which appeared to comprise a “parking page” including links to products and services relating to swimming pools. 5. Parties’ Contentions A. Complainant
The Complainant states that is sells swimming pools, accessories and supplies, primarily for customers’ homes, and that it has been in operation since 1993. It states that it operated initially in the New York City metro area, New Jersey, Pennsylvania and Connecticut and that it expanded its geographical reach further in or about 2009, due largely to the growth of online business.
The Complainant states that it registered the domain names in January 2005 and in May 2009 and used those domain names, respectively, for the purpose of its business. The Complainant states that it purchased the domain name from its original registrant in January 2012 and has additionally used that domain name since that time. It states that it has purchased many other domain names for “defensive purposes” and produces a list of 62 such names, many of which include the term “poolfactory”.
The Complainant submits that it has a long, continuous and extensive history of using, advertising and promoting its THE POOL FACTORY trademark and has generated goodwill of inestimable value in that mark.
The Complainant states that it noticed in 2011 that the disputed domain name was being used for the purposes of a “pay-per-click” website. The Complainant states that it has offered on several occasions to purchase the disputed domain name but that the Respondent has been unwilling to negotiate or to sell the name (the Complainant does not exhibit any of the correspondence in this regard).
The Complainant submits that that the disputed domain name is confusingly similar to a trademark or service mark in which it has rights.
The Complainant submits that the disputed domain name is identical to its THE POOL FACTORY trademark, but for the omission of the term “the” and the inclusion of the generic top level domain (“gTLD”) “.com”, neither of which are significant for the purposes of comparison.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant states that it has never licensed or authorized the Respondent to register the disputed domain name or otherwise to use its trademark THE POOL FACTORY. It also submits that the Respondent did not use the mark THE POOL FACTORY or any similar mark for the purpose of business prior to the Complainant’s use of that mark and that the Respondent has not commonly been known by that mark.
The Complainant submits that the Respondent has used the disputed domain name in connection in with a “parking page” for links to “pay-per-click” advertising for a range of goods and services including those of the Complainant and also its competitors. The Complainant alleges that the links on the website are based on the value of the Complainant’s trademark and that such use cannot give rise to rights or legitimate interests on the part of the Respondent.
The Complainant submits further that the fact that the Respondent has owned the disputed domain name for over ten years without making any bona fide use of it also suggests that the Respondent does not have any rights or legitimate interests in respect of it.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant submits that its trademark THE POOL FACTORY had been in continuous and “substantially exclusive” use for over ten years before the Respondent registered the disputed domain name and was “known within the industry.” As a result of these matters, the Complainant submits that it should be inferred that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name.
The Complainant repeats that the Respondent has no rights or legitimate interests in the disputed domain name as a result of operating a “pay-per-click” website and that, on the contrary, the Respondent intends to earn financial commissions by deceiving visitors into thinking that the website is associated with the Complainant. The Complainant submits that using a domain name with the intent of causing confusion is an abuse. Specifically, the Complainant contends that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, and submits that the Respondent intends to divert Internet traffic to its “pay-per-click” website and to trade off the reputation and goodwill of the Complainant.
The Complainant also alleges that the Respondent registered the disputed domain name in order to prevent the Complainant from doing so and that it has been engaged in a pattern of such conduct. It submits that TD Domain Names owns over 5,000 other domain names that are operated as “pay-per-click” websites and exhibits a list of some of those names. The Complainant points to the decision under the UDRP in Sleep One, Inc v. TD Domain Names, WIPO Case No. D2010-1859 in which an order for transfer of the relevant domain name was made.
The Complainant requests a transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even in a case such as this where the Respondent has failed to file a Response, the Complainant must nevertheless demonstrate to the satisfaction of the Panel, on balance, that each of the above elements is present. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark THE POOL FACTORY. The disputed domain name comprises the term “poolfactory” together with the gTLD “.com”, which is typically to be ignored for the purposes of comparison. The Panel accepts that the omission of the term “the” is also not of significance for the purposes of comparison and finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
On the evidence available, it appears to the Panel that the Respondent has used the disputed domain name, at least since 2011, for the purpose of a “parking page” website including links to products and services relating to swimming pools. The Panel also finds, on balance, that the website is likely to generate revenue for the Respondent on a “pay-per-click” or similar basis.
While the Complainant has established that it has trademark rights in respect of the mark THE POOL FACTORY, the term “poolfactory” is nevertheless comprised of two dictionary terms, the combination of which also results, in the Panel’s view, in an arguably descriptive term. A respondent may have rights or legitimate interests in a domain name of this nature if it is using the domain name to support “pay-per-click” links genuinely related to the dictionary or generic meaning of the domain name. On the other hand, a respondent is unlikely to have rights or legitimate interests where its intention is, rather, to use the domain name to trade off the reputation and goodwill of a corresponding trademark owner (see, e.g., paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
While the Panel considers this potentially to be a finely balanced issue in this case, it is not one that it is necessary finally to resolve in view of the Panel’s findings on the issue of bad faith as set out below. C. Registered and Used in Bad Faith
In order to meet the requirements of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith. This is a conjunctive requirement and both elements must be shown; i.e., both the registration of the domain name and use of the domain name must be shown to be in bad faith.
In this case, the Complainant has failed to satisfy the Panel that the disputed domain name was registered in bad faith. To succeed in this task, the Complainant must persuade the Panel, on the balance of probabilities, that the Respondent chose the disputed domain name in the knowledge of the Complainant’s name and rights and with the intention of improperly benefitting from the Complainant’s reputation and goodwill. However, at the date of registration of the disputed domain name, July 2004, the Complainant operated in the New York City metro area, New Jersey, Pennsylvania and Connecticut and did not have any online presence or registered trade mark rights. There is no evidence that the Respondent or TD Domain Names had a presence in those geographical areas or that they were, or should have been, otherwise aware of the Complainant and its trading name. While the Complainant submits that its name “poolfactory” was known “in the industry”, there is no evidence that the Respondent or TD Domain Names operated in the same industry as the Complainant. While the Complainant may by 2004 have gained some limited level of unregistered rights in the term “poolfactory”, the Panel does not consider, based on the evidence of record, that the name was at that date so distinctive that the disputed domain name can only have referred to the Complainant, or that there are other grounds upon which to infer, on the balance of probabilities, that the Respondent was aware of the Complainant and its name at the date of registration of the disputed domain name.
Nor is the Panel persuaded by the Complainant’s allegation that the Respondent (or at any rate TD Domain Names, which the Panel will assume for present purposes is connected with the Respondent) has registered over 5,000 domain names. Trading in domain names is not of itself improper and a review of the limited number of domain names (approximately 45) that the Complainant has exhibited does not support an assertion that the Respondent or TD Domain Names has engaged in a pattern of abusive registrations. The overwhelming majority of those names appear to the Panel to be unobjectionable in nature and the Panel also notes that the Complainant has cited only one example, from 2010, of a finding against TD Domain Names under the UDRP.
The panel notes that the Complainant purchased a similar domain name, , from its original owner and has attempted to do likewise, apparently on several occasions, in respect of the disputed domain name. Had there been anything in that correspondence to support an allegation that the disputed domain name had been registered in bad faith, then the Panel would have expected any such correspondence to have been exhibited. In fact, these matters (and the Complainant’s evidence that it has amassed 62 other domain names for “defensive purposes”) are somewhat suggestive to the Panel of frustration on the part of the Complainant that it has been unable to obtain the disputed domain name by way of commercial negotiation.
The Panel accepts that it is arguable (although by no means clear) that the disputed domain name may have been used in bad faith. The basis of that argument is that, having been made aware of the Complainant’s rights in the mark “THE POOL FACTORY”, the Respondent has continued to use a confusingly similar domain name for the purposes of “pay-per-click” advertising, including links to competitors of the Complainant. However, given the descriptive nature of the name and the Panel’s finding that it was not registered in bad faith, it is not clear that the Respondent’s intention has been to profit from the Complainant’s reputation and goodwill as opposed to using a descriptive name for the purposes of links to related goods and services. In any event, because of the Panel’s finding that the disputed domain name was not registered in bad faith, it is unnecessary to resolve this particular issue.
In the circumstances, the Complainant has failed to establish to the satisfaction of the Panel that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Steven A. Maier
Sole Panelist
Date: May 8, 2015
Full & Egal Universal Law Academy