Western Heights Water Company v. Patrick Kelly
Claim Number: FA1909001861983
Complainant is Western Heights Water Company (“Complainant”), represented by Steven J. Adamski, California, USA. Respondent is Patrick Kelly (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name at issue is <westernheightswater.com>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 13, 2019; the Forum received payment on September 13, 2019.
On September 13, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the disputed domain name <westernheightswater.com> is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@westernheightswater.com. Also, on September 17, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 7, 2019.
On October 14, 2019, Complainant filed an Additional Submission which complies with Supplemental Rule 7.
On October 21, 2019, Respondent filed an Additional Submission which complies with Supplemental Rule 7.
On October 9, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a. Complainant operates a municipal water service in California.
b. Complainant had rights in the mark WESTERN HEIGHTS WATER COMPANY registered with the State of California (Reg. No. 69,420, registered on May 20, 2014).
c. Complainant has common law rights in the mark WESTERN HEIGHTS WATER COMPANY which have been recognized by previous Panels.
d. Respondent’s disputed domain name <westernheightswater.com> is confusingly similar to Complainant’s WESTERN HEIGHTS WATER COMPANY as it incorporates Complainant’s mark WESTERN HEIGHTS WATER COMPANY, and merely adds the “.com” generic top-level domain (“gTLD”).
e. Respondent lacks rights or legitimate interests in the disputed domain name <westernheightswater.com>.
f. Respondent is not authorized or licensed to use Complainant’s mark WESTERN HEIGHTS WATER COMPANY and there is no evidence to suggest that Respondent as listed in the WHOIS record is commonly known by the disputed domain name.
g. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because Respondent uses the disputed domain name’s resolving webpage to pass off as Complainant.
h. Respondent was also a party to a prior dispute involving the WESTERN HEIGHTS WATER COMPANY mark in which it was ordered to transfer the disputed domain name in that case. See Western Heights Water Company v. Patrick Kelly / Patrick Q Kelly / Whois Protector, FA1559657 (Forum June 28, 2014).
i. Respondent registered and uses the disputed domain name <westernheightswater.com> in bad faith.
j. Respondent attempts to attract, for commercial gain, users to the disputed domain name where Respondent misleads Internet users away from Complainant’s legitimate website by passing off as Complainant.
k. Respondent also had actual knowledge of Complainant’s WESTERN HEIGHTS WATER COMPANY mark prior to registering the disputed domain name.
B. Respondent
a. Respondent registered the disputed domain name <westernheightswater.com> on August 7, 2014.
b. Respondent makes a legitimate noncommercial or fair use of the disputed domain name by using the disputed domain name’s resolving webpage to provide information on Complainant’s public water utility service for community members and shareholders.
c. Respondent has no intent for commercial gain, to misleadingly divert consumers, or tarnish the WESTERN HEIGHTS WATER COMPANY mark.
d. Complainant has a monopoly on the public water service in the area, so Respondent is unable to compete or provide commercial interest.
C. Additional Submissions
a. Complainant’s Additional submission
i. Respondent’s argument to rebut the confusion similarity between the mark and the disputed domain name are irrelevant as merely removing the word “company” is not enough to differentiate the disputed domain name from the trademark.
ii. Respondent’s claims that the use of the resolving website is legitimate are odd as this is an individual living in Pennsylvania allegedly interested in the relationship between a California mutual water company and its shareholders/customers.
iii. Respondent could have chosen any other domain name to fulfill its purpose, choosing the disputed domain name demonstrates the lack of legitimate interest and good faith.
iv. Respondent’s selection of a confusingly similar domain name and the closeness of the features of the website with those of Complainant’s shows bad faith.
b. Respondent’s Additional submission
i. There was no copyrighted material.
ii. Complainant did not exercise any right over the disputed domain name.
iii. The resolving website is a platform for whistle-blowing and fiscal accountability concerning the Board of Directors and general company policies concerning water conservation and sourcing.
iv. Customers cannot be directed away from the Complainant’s business regardless of whatever domain they visit.
v. Respondent has no ability to gain commercially from any visitors to the resolving website.
1. Complainant has common law rights over the mark WESTERN HEIGHTS WATER COMPANY in the United States of America, since before the disputed domain name was registered by Respondent.
2. Respondent was aware of Complainant’s rights in the mark WESTERN HEIGHTS WATER COMPANY, as Respondent has already been engaged in an Administrative Dispute under the UDRP Policy with Complainant.
3. The disputed domain name incorporates Complainant’s trademark.
4. Complainant has never authorized, licensed or otherwise permitted Respondent to use the mark WESTERN HEIGHTS WATER COMPANY.
5. Respondent has registered the disputed domain name in order to prevent Complainant from reflecting the mark in the corresponding domain name.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows: First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and finally, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.
Complainant contends to have rights over the mark WESTERN HEIGHTS WATER COMPANY in the United States of America.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.
The worldwide accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, a previous Panel has accepted the existence of common law rights over the mark WESTERN HEIGHTS WATER COMPANY, (Western Heights Water Company v. Patrick Kelly / Patrick Q Kelly / Whois Protector westernheightswatercompany.org / WhoisProtector Inc. FA1405001559657. Anne M Wallace, QC, Panelist. June 28, 2014), in the following terms:
“Complainant has provided evidence that:
· It has common law rights in the WESTERN HEIGHTS WATER COMPANY and WHWC service marks that predate Respondent’s registration on the Disputed Domain Names.
· Complainant incorporated in February 1912, as the Yucaipa Water Company and in 1913 changed its name to Western Heights Water Company.
· Complainant currently has 2,200 potable water services in and around the California cities of Yucaipa and Redlands.
· Complainant has used the term WESTERN HEIGHTS WATER COMPANY to identify its services to both customers and non-customers for the last hundred years.
· Complainant has used its mark exclusively and continuously on signage, stationary, public notices, customer literature, business cards, uniforms, and vehicles to distinguish the services provided by Complainant.
· Complainant has used the WHWC mark for the last ten years to promote and distinguish its business and water related services. It has also used the WHWC mark in its signage, stationary, and the like”.
Moreover, Complainant provided evidence of its common law rights in the mark WESTERN HEIGHTS WATER COMPANY (Annexes F and G of the Complaint).
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited mark and the exclusive right to use them in connection with distribution of water.
Thus, Complainant established its rights in the mark WESTERN HEIGHTS WATER COMPANY[ii].
Respondent does not contest Complainant’s rights.
Therefore, the Panel concludes that Complainant has demonstrated rights in the mark WESTERN HEIGHTS WATER COMPANY for purposes of Paragraph ¶ 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain reproduces the mark WESTERN HEIGHTS WATER COMPANY.
On the first place, before establishing whether or not the disputed domain name <westernheightswater.com> is confusingly similar to Complainant’s mark WESTERN HEIGHTS WATER COMPANY, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[iii].
UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
Furthermore, the Panel considers that the reproduction of the mark WESTERN HEIGHTS WATER COMPANY, by the disputed domain name <westernheightswater.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iv], mainly since the disputed domain name reproduces Complainant’s trademark without any other distinctive elements, differentiating the disputed domain name by merely eliminating the word “company”. Consequently, consumers will assume that the owner of the disputed domain name is Complainant. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In addition, the Panel agrees with the Complainant on the conclusion that eliminating the generic term “company” is not sufficient to make the disputed domain name different from the mark WESTERN HEIGHTS WATER COMPANY.
This elimination rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the mark. Hence, the disputed domain name should be deemed as confusingly similar to the mark WESTERN HEIGHTS WATER COMPANY [v].
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.
a) Prima Facie Case.
Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of Respondent[vi].
In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:
“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.
Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests[vii]. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <westernheightswater.com> because of the following: i) Respondent is not permitted or authorized to use Complainant’s trademarks; ii) Respondent is not commonly known by the disputed domain name; iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name; and iv) Respondent's intent is to gain an unfair commercial or economic advantage over Complainant, to mislead and divert consumers and/or to tarnish Complainant’s marks and reputation.
The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.
b) Respondent’s rights or legitimate interests in the disputed Domain Name.
Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is 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.
Respondent states that, Respondent has rights and legitimate interests in the disputed domain name as the disputed domain name has been used to provide the shareholders of Complainant information on the activities of the Board of Directors and that there are no commercial activities associated with the disputed domain name.
However, Complainant shows how Respondent has used Complainant’s trademarks in the website to which the disputed domain name resolves and the distribution of the website which imitates Complainant’s website.
Given the above, the Panel considers the following:
1. Respondent registered or acquired the disputed domain name after a proceeding under the UDRP Policy, concerning the same parties and highly similar domain names. Thus, Respondent’s use of the disputed domain name was not done before any notice of the dispute. In consequence, the subsequent use of the disputed domain name is irrelevant and cannot be considered to be done in bona fide.
2. Moreover, the use of the disputed domain name proved by Complainant, cannot be qualified as bona fide since the resolving website reproduces Complainant’s trademarks, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
3. Respondent use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
4. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.
5. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the mark at issue, since the use of the same marks and distribution of the website is misleading and Respondent’s use of Complainant’s mark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.
Consequently, Respondent was well aware of Complainant’s marks since before this dispute initiated. Yet Respondent incorporated said marks in the disputed domain name. Thus, Respondent used the Complainant’s marks to create a likelihood of confusion aimed to divert consumers to Respondent’s website.
Therefore, the second requirement of paragraph 4(c) of the Policy is met.
According to paragraph 4(b) 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 and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website 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 his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith as Respondent knew of the mark WESTERN HEIGHTS WATER COMPANY[viii], and has already been part of a proceeding under the UDRP Policy.
The Panel agrees with Complainant. The fact that Respondent chose the phrase WESTERN HEIGHTS WATER to make up the disputed domain name is, in this Panel’s view evidence per se of bad faith. The Panel finds this selection was deliberate and not product of chance since Respondent knew of Complainant’s rights and uses Complainant’s marks in the resolving website.
Thus, the Panel finds Respondent deliberately took someone else’s trademark to register a domain name in order to prevent the owner of the mark from reflecting the same in a corresponding domain name, as Respondent has engaged in a pattern of such conduct.
Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[ix]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, the Panel considers that Respondent must have known that the phrase WESTERN HEIGHTS WATER within the disputed domain name would attract Internet users seeking Complainant’s trademark, to the website. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s mark.
Furthermore, Respondent intentionally attempted to attract, Internet users to its website due to the inclusion of Complainant’s mark in the disputed domain name and its design in the website. Hence, consumers would not able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s mark and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Finally, the incorporation of Complainant’s mark in the disputed domain name and the use of Complainant’s trademarks within the website can disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain name disputed domain name <westernheightswater.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: October 22, 2019
[i] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO March 23, 2000).
[ii] See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Group plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[iii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[iv] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[v] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[vi] See Arla Foods amba v. Bel Arbor / Domain Admin, PrivacyProtect.org, D2012-0875 (WIPO June 7, 2012); see also F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Servs., D2012-0474 (WIPO April 24, 2012).
[vii] See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO August 1, 2000).
[viii] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.
[ix] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
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