The Complainant is Water Pik, Inc. of Fort Collins, Colorado, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Omar Motta of Miami, Florida, United States of America, and of Hernadarias, Alto Parana, Paraguay. 2. The Domain Name and Registrar
The disputed domain name is . The Registry is AE Domain Administration (.aeDA) and the Registrar is Instra Corporation Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 19, 2014. On June 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the "Policy"), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Supplemental Rules").
In accordance with the paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 3, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 23, 2014. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 24, 2014.
The Center appointed Assen Alexiev as panelist in this matter on August 1, 2014. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant sells and markets various products, including oral health care products, sinus health products and showerheads under the trademark WATERPIK in over 80 countries worldwide.
The Complainant is the owner of the following registrations of the trademark WATERPIK (the "WATERPIK trademark") in the United States of America and internationally:
- the word trademark WATERPIK with registration number 923514, registered in the United States of America on November 9, 1971 for goods in International classes 10 and 21;
- the word trademark WATERPIK with registration number 978418, registered in the United States of America on February 12, 1974 for goods in International class 11;
- the word trademark WATERPIK with registration number IR 970716, registered as an International trademark on June 25, 2008 for goods in International classes 05, 10, 11 and 21; and
- the combined trademark WATERPIK with registration number IR 970718, registered as an International trademark on June 27, 2008 for goods in International classes 05, 10, 11 and 21.
The Complainant is also the registrant of the domain names and , and has used them since 1998 to operate a website through which it promotes and offers for sale its goods.
The disputed domain name was registered on March 5, 2014. 5. Parties' Contentions A. Complainant
The Complainant submits that since 1961 it has extensively advertised and promoted the WATERPIK trademark, and that its products have been recognized on numerous occasions for their award-winning design and technology. The Complainant has become a leader in developing and manufacturing innovative personal and oral health care products, and its WATERPIK trademark are now one of the most renowned brands in the market for oral health care and showerhead products.
According to the Complainant, the disputed domain name is identical to the WATERPIK trademark, as it incorporates the trademark in its entirety. The addition of the ".ae" country-code Top-Level Domain ("ccTLD") is insignificant and does not remove the likelihood of confusion between the WATERPIK trademark and the disputed domain name. The use of a ccTLD makes it likely that consumers will believe that the disputed domain name relates to the Complainant's official web presence in the United Arab Emirates. Therefore, the disputed domain name is likely to confuse consumers into believing that the Respondent is affiliated with the Complainant.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a franchisee, affiliated business, or licensee of the Complainant and the Complainant has not authorized the Respondent to register the disputed domain name or to use Complainant's WATERPIK trademark. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to divert consumers or to tarnish the WATERPIK trademark.
The Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. Given the long-term and widespread use and notoriety of the Complainant's WATERPIK trademark as well as the Complainant's extensive online presence, it is inconceivable that the Respondent was unaware of the Complainant's WATERPIK trademark and rights. The Complainant's trademark registrations provide the Respondent with constructive knowledge of the Complainant's ownership of the WATERPIK trademark. Therefore, the Respondent's choice of the disputed domain name must have been motivated by intent to trade on the Complainant's goodwill in its WATERPIK trademark and to lead the consumers to believe that the disputed domain name is associated with the Complainant, or to divert potential consumers of the Complainant's goods.
As further evidence of bad faith, the Complainant notes that the Respondent has a history of infringing behavior with respect to the WATERPIK trademark and products. According to the Complainant, the Respondent is also selling unauthorized Water Pik products in South America through the website at "". The unauthorized sale of parallel goods by the Respondent has resulted in customer complaints and the Complainant is taking action to address those complaints. Additionally, the Respondent filed two trademark applications in Paraguay for the WATERPIK trademark in an attempt to obtain illegitimate rights in it. The Complainant has successfully opposed these applications. Finally, the Respondent was also connected with the registration of the domain name , which was transferred to the Complainant following a successful action under the ".br" Policy. (See Water Pik, Inc. v. Viviani Sacromori,WIPO Case No. DBR2013-0009)
The Complainant requests the transfer of the disputed domain name to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion And Findings
Pursuant to Policy, paragraph 6(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered or is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
According to Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (Registrant) to retain Registration and use of the disputed Domain Name…"
In the event of a default, under Rules, paragraph (14)(b): "…the Panel shall draw such inferences there from as it considers appropriate." The Panel finds it appropriate to refer also to previous Uniform Domain Name Dispute Resolution Policy ("UDRP") decisions where appropriate, since the Policy is a variation of the UDRP.
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." Also, as stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In this administrative proceeding, the Respondent's default entitles the Panel to conclude that the Respondent likely has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to make its Decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided information about the registrations of the WATERPIK trademark and has thus established its rights in this trademark.
The disputed domain name contains a combination of two elements: "waterpik" and "ae". The "waterpik" element is identical to the Complainant's WATERPIK trademark, and the "ae" element, being the ccTLD, may be disregarded for the purposes of the comparison under the Policy, paragraph 6(a)(i). In any event, in the Panel's view, even if the "ae" element is taken into account, it does not distinguish the disputed domain name from the WATERPIK trademark. Rather, as contended by the Complainant, it makes it likely that Internet users would regard the disputed domain name as related to the Complainant's activities in the United Arab Emirates.
Therefore, the Panel finds that the disputed domain name is identical to the WATERPIK trademark in which the Complainant has rights, and that the Complainant has established the first element of paragraph 6(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is widely accepted under the UDRP that a complainant is required to make at least a prima facie case that the respondent has no rights or legitimate interests in the disputed domain name. Once the complainant makes such a case, the respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the respondent lacks rights or legitimate interests in the disputed domain name. As the Policy is a variation of the UDRP, the Panel will follow the same practice in the present proceeding.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the name "waterpik" and is not affiliated with the Complainant, that it was not authorized or licensed to use the WATERPIK trademark or to register a domain name incorporating the same trademark. The Complainant also asserts that the Respondent has attempted to register the same trademark in Paraguay, but this attempt was successfully opposed by the Complainant. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent, although given a fair opportunity to do so, chose not to present to the Panel any response in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any legitimate reason for the registration and use of the disputed domain name, it could have brought it to the attention of the Panel. In particular, the Respondent has failed to deny the contentions of the Complainant and to contend that any of the circumstances described in Policy, paragraph 6(c), is present in its favor.
Apart from the factual contentions of the Complainant, the only other sources of information about the Respondent is the WhoIs information, provided by the Registrar and the content of the website at the disputed domain name.
The WhoIs information for the disputed domain name does not show a connection between the name of the Respondent and the disputed domain name.
The disputed domain name is identical to the WATERPIK trademark of the Complainant, which was registered decades before the registration of the disputed domain name. As contended by the Complainant and undisputed by the Respondent, the Respondent has not linked the disputed domain name to an active website. As further contended by the Complainant, the Respondent has attempted to create trademark rights in "waterpik" through a trademark registration in Paraguay, which was opposed by the Complainant. Therefore, the Respondent does not have trademark rights in the designation "waterpik".
In the Panel's view, these circumstances show that the Respondent must have been aware of the Complainant and of its WATERPIK trademark when the disputed domain name was registered. The registration of the disputed domain name took place without the consent of the Complainant while at the Respondent attempted to secure trademark rights in the designation "waterpik". The Panel finds it more likely than not that all this has been made in an attempt to obtain a domain name that is attractive to customers because they may relate it to the Complainant and to its WATERPIK trademark, and thus to benefit from the reputation of the latter. The Panel is of the opinion that such conduct cannot give rise to rights and legitimate interests in the disputed domain name, and finds that the Complainant's prima facie case has not been rebutted, and the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Complainant has established the second element under paragraph 6(a) of the Policy. C. Registered or Used in Bad Faith
For the purposes of paragraph 6(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or use of the disputed domain name in bad faith:
i) circumstances indicating that the Respondent has registered or has acquired the disputed 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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
ii) the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's
web site or location or of a product or service on the Respondent's web site or location.
The Complainant asserts that the Respondent's choice of the disputed domain name must have been motivated by the knowledge of the Complainant's goodwill in its WATERPIK trademark, and by the intent to illegitimately extract benefit from this goodwill by leading the consumers to believe that the disputed domain name is associated with the Complainant. The Complainant submits that Respondent has a history of infringing behavior with respect to the WATERPIK trademark and products, including selling unauthorized Water Pik products in South America and filing trademark applications in Paraguay for the WATERPIK trademark in an attempt to obtain illegitimate rights in it. The Complainant also maintains that the Respondent was also connected with the registration of the domain name , which was transferred to the Complainant following a successful action under the ".br" Policy (see above).
None of these contentions has been opposed by the Respondent, and it has not submitted any arguments or evidence in support of its position, although given a fair opportunity to present its case in the present proceeding. In these circumstances, the Panel is prepared to accept that it is more likely than not that the Respondent has registered the disputed domain name with knowledge of the Complainant and with an intent to secure rights in a domain name that is closely linked to the Complainant and to its WATERPIK trademark and thus to illegitimately benefit from the goodwill of the latter. In the Panel's view, such conduct supports a finding that the disputed domain name was registered in bad faith. Under the Policy, a finding of registration in bad faith is sufficient ground for the transfer of the disputed domain name, requested by the Complainant. Therefore, the Panel finds that the Complainant has succeeded under paragraph 6(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Assen Alexiev
Panelist
Date: August 16, 2014
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