Complainant is Jacuzzi Inc. of Chino Hills, California, United States of America (“United States”), represented by Donahue Fitzgerald, United States.
Respondent is Cesar Flores Lopez / Capteville Design Center of Monterrey, Nuevo León, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2015. On September 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 14, 2015.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 23, 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. 4. Factual Background
Complainant is a manufacturer and distributor of whirlpool baths and spa-related products. Complainant carries its business in numerous regions including North and South America, Central America (including Mexico), Europe, Asia, and Australia.
Complainant has registered the JACUZZI trademark, or variations thereof, in several jurisdictions. Since 1950, Complainant has continuously used its trademarks as the key component of its name and in connection with its commercial offering to the public of spa, pool, bath, plumbing, and other products. Complainant has also registered numerous domain names including, .
Respondent registered the disputed domain name on June 12, 2009. 5. Parties’ Contentions A. Complainant
Complainant owns registered rights in the JACUZZI trademark in the United States, Mexico, and in dozens of other countries around the world. Complainant states that the disputed domain name is identical or confusingly similar to its trademark.
With respect to the existence of rights or legitimate interests, the Complaint states that:
- Complainant has never authorized Respondent to use the trademark in the disputed domain name.
- Respondent had notice of this dispute when it registered the disputed domain name: in an email exchange with Complainant available as Exhibit M to the Complaint, Respondent admitted that Respondent has been selling Complainant’s products since 1997.
- Respondent cannot establish any rights or legitimate interests in the disputed domain name because Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Instead, Respondent has used the disputed domain name because it consists of literally just Complainant’s trademark and, due to user confusion with the trademark, generates traffic to Respondent’s website by misleading consumers searching for Complainant and not Respondent.
- The disputed domain name is comprised entirely of Complainant’s trademark (and thus of the “Jacuzzi” name) and suggests to consumers that any website to which the disputed domain name resolves must either be an official website of Complainant or must somehow be affiliated with Complainant.
- Respondent’s design of the content of the website co-opts Complainant’s oval trademark, and fails to disclaim the absence of any association with or endorsement or sponsorship by Complainant, and causes visitors to falsely believe that Respondent either is, or has a formal relationship with, Complainant.
- Respondent has never been commonly known by the disputed domain name.
- The commercial use inherent in Respondent’s website means Respondent cannot claim any right or legitimate interest in the disputed domain name.
With respect to bad faith registration and use, Complainant states that:
- Respondent’s bad faith under the Policy is proven by the fact that Complainant’s trademark is truly world-famous, and Complainant obtained its registered and common law rights in its trademark decades before Respondent registered the disputed domain name.
- Given that Respondent has been using its website to sell Complainant’s products, it would be implausible for Respondent to argue that it innocently registered the disputed domain name in good faith and without knowledge of Complainant’s trademark rights. To the contrary, it is obvious that Respondent specifically registered the disputed domain name to illegally capitalize on and usurp the goodwill associated with Complainant’s trademark.
- Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website by Complainant, as described in paragraph 4(b)(iv) of the Policy.
- The record proves Respondent’s bad faith in both registering and using the disputed domain name insofar as Respondent, both with the construction of the disputed domain name, which consists only of Complainant’s trademark and no other word other than the country-code Top Level Domain (“ccTLD”), and with the content of Respondent's website, has made no effort whatsoever to disclaim any relationship with Complainant. Instead, the disputed domain name and the content of Respondent’s website unambiguously and falsely suggest to consumers that the disputed domain name is owned by either Complainant or an authorized affiliate of Complainant. This constitutes bad faith registration and use.
Complainant requests the transfer of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, therefore, Complainant has the burden of proving the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated ownership of the JACUZZI trademarks registered in several countries around the world, including Respondent’s jurisdiction.
The disputed domain name is identical to Complainant’s trademark except for the addition of the “.cc” country code Top-Level Domain (“ccTLD”). Such addition does not change the Panel’s conclusion since the ccTLD extension”.cc” is a functional part of the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has 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.
There is no evidence of the existence of any of those rights or legitimate interests. Complainant has not authorized, licensed, or permitted Respondent to register or use the disputed domain name or to use its trademark. Complainant has prior rights in the trademarks (including trademark registrations in Mexico, where Respondent is located) which precede Respondent’s registration of the disputed domain name by several decades. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), paragraph 2.1).
Respondent has failed to show that it has acquired any trademark rights in respect of the disputed domain name.
The Panel visited the website at the disputed domain name and was able to verify that Respondent is using Complainant’s composite trademark consisting of an oval design containing the JACUZZI trademark in the disputed domain name next to the word Mexico and appears to be selling only Jacuzzi-brand products. In addition, the contact tab in the website at the disputed domain name mentions Jacuzzi as the company contact information with a Mexican domicile. There is no disclaimer on the website explaining that Respondent is not affiliated with Complainant. This clearly gives the impression that the disputed domain name is an authorized website from Complainant, however, Complainant has not authorized its registration and use. As such, Respondent does not meet the Oki Data requirements (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 and WIPO Overview 2.0, paragraph 2.3), and the disputed domain name is not being used in connection with a bona fide offering of goods or services.
Therefore, the Panel finds that Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Complainant must prove both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Complainant’s allegations with regard to Respondent’s registration and use of the disputed domain name in bad faith have been considered by the Panel. These allegations have not been contested by the Respondent because of its default.
The Panel considers that the disputed domain name was registered and is being used in bad faith.
Respondent is selling Complainant’s products on the website at the disputed domain name. In an email exchange with Complainant, Respondent admitted that Respondent has been selling Complainant’s products since 1997. Respondent has not denied these assertions made in the Complaint. Thus, the Panel concludes that Respondent knew of Complainant’s trademark when registering the disputed domain name.
With respect to bad faith use, the Panel finds that Respondent is using Complainant’s composite trademark consisting of an oval design containing the JACUZZI trademark in the disputed domain name next to the word “Mexico”. The contact tab (“Contacto”) on the website at the disputed domain name mentions “Jacuzzi” as the name of the contact company. In addition, there is no disclaimer on the website at the disputed domain name. An Internet user would likely believe that the disputed domain name belongs to Complainant.
Therefore, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This is the situation described in the Policy paragraph 4(b)(iv).
Thus the Panel concludes that the disputed domain name was registered and is being used in bad faith. 7. Decision
For 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.
Pablo A. Palazzi
Sole Panelist
Date: November 16, 2015
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