Aqua Massage International Inc v. Baron Stone Corporation
Claim Number: FA0110000101514
The Complainant is David Cote Aqua Massage International, Inc., Groton, CT (“Complainant”). The Respondent is Allen Licht, Baron Stone, Inc., Hollywood, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <aquamassage.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 29, 2001; the Forum received a hard copy of the Complaint on November 2, 2001.
On October 31, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <aquamassage.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely response was received and determined to be complete on November 6, 2001. In addition, both parties submitted additional supplements that were forwarded to the Panel. The Panel reviewed these late-filed documents with a view toward determining whether or not they contained information that the ends of justice and the Rules would require the Panel to consider and that would affect the outcome. The Panel finds that they do not.
On November 20, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant urges that the domain name in issue is identical to or confusingly similar to a mark in which Complainant has rights; that the Respondent has no rights to or legitimate interests in the domain name in issue, and that since Respondent is a former associate of Complainant, who knows that no permission has been given to use Complainant’s mark, that the Respondent has acted in bad faith in registering and using the domain name containing Complainant’s mark.
B. Respondent asserts that Complainant is not the true owner of the mark, that the Respondent has an interest in the mark contained within the domain name and that Respondent did not act in bad faith.
C. Both parties filed additional submissions; the Panel reviewed them but finds them not determinative of the outcome.
Complainant registered the trademark AQUA MASSAGE with the United States Patent office at least by November 1989 and had used the name in commerce by 1987.
Complainant, Aqua Massage International, Inc., is legally and commonly known by the mark contained in its entirety in the domain name in question.
The Network Solutions’ verification document shows that Barron (sic) Stone, Inc. is the registrant of the domain name <aquamassage.com> and that it was registered January 8, 1997. Respondent used the name Baron Stone Corporation in this domain name dispute.
Respondent is a former equipment distributor for Complainant in Florida and Complainant urges that the distribution agreement was cancelled for “gross violations of the agreement.”
Respondent’s use of the website at the domain name has included quotes of highly-inflated prices and, most recently, the notice: “Sorry, We are out of business.”
Respondent states that it has used the disputed domain name since 1997, but this is ten years after Complainant’s first use of the name.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(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.
Complainant established its rights to the mark contained in its entirety in the domain name registered by Respondent. Complainant contends that the domain name registered by Respondent, <aquamassage.com>, is identical to Complainant’s registered AQUA MASSAGE trademark. The addition of a top level such as .com does not distinguish Respondent’s domain name from Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that the <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).
Respondent contends that its domain name is different from Complainant’s registered mark because Complainant’s mark has a space between AQUA and MASSAGE whereas Respondent’s domain name does not. The fact that Complainant’s mark has a space between the two words of the mark does not have the effect that Respondent seeks. The Panel may find that Respondent’s <aquamassage.com> domain name is confusingly similar to Complainant’s registered AQUA MASSAGE because the space between “AQUA” and “MASSAGE” in Complainant’s mark does not make it a different mark from the words used by Respondent in registering the domain name in issue. See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding that varying punctuation of a trademark still makes the domain name confusingly similar); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
Respondent also urges that the Complainant’s AQUA MASSAGE mark is generic and that for that reason, Respondent is free to register the mark in a domain name. A Panel may find that Complainant’s mark is not subject to protection where AQUA and MASSAGE are generic terms. See PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning). But that would not be appropriate here. Not only has Complainant satisfied the burden of proving distinctiveness or secondary meaning with its registered trademark here, Complainant has also shown that Respondent is a former associate of the Complainant, that they separated on less than satisfactory terms and that Respondent knew that Complainant had registered the AQUA MASSAGE mark. Moreover, Respondent has not shown that Respondent planned a generic use for the two words; Respondent knowingly used Complainant’s mark to its own ends.
The Panel finds that Complainant satisfied the requirements of Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
Complainant contends that Respondent does not have any rights or legitimate interests in the domain name at issue because it did not use it to make a bona fide offering of goods. Complainant further urges that Respondent’s use of the domain name to divert Complainant’s customers to Respondent’s own site for commercial gain is not a bona fide offering of goods. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Complainant also contends that Respondent does not have any rights or legitimate interests in <aquamassage.com> because Respondent is not commonly known by the name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Finally Complainant contends that Respondent does not have any rights or legitimate interests in the domain name because Respondent’s use of the domain name to divert Complainant’s customers to Respondent’s site for profit is not a non-commercial or fair use. See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel may also find that Respondent does not have any rights or legitimate interests in the domain name because he is a former employee of Complainant and would have been aware of Complainant’s mark and that he further knew or should have know that Complainant has a prior interest in the mark that was protected by use and trademark. See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark…the Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interest or right…this is sufficient for Complainant to establish that Respondent had no rights or interest in the domain name); see also Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2001) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark).
Had Respondent developed a legitimate business interest of its own using the mark in a manner that did not conflict with Complainant’s protected use of the mark, the Panel might be able to find that Respondent had rights and legitimate interests in the domain name. See 3Z Prod. v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where Respondent sought to develop a bona fide business use for the domain name). Where that has been permitted, the Respondent’s business reflected the Respondent’s business name. These facts do not permit that holding; however, because Respondent has not established that Respondent acquired recognition as well as financial gain through the development of its website to promote a bona fide business that was separate from the selling of Complainant’s product under Complainant’s own name. Here, Respondent’s selling and leasing of aqua massage equipment, including what it acquired from Complainant, was attempted under Complainant’s name. This suggests opportunistic conduct that is not a bona fide use. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name).
The Panel finds that Complainant satisfied the requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant urges that Respondent acted in bad faith in registering and using the domain name containing in its entirety the Complaint’s mark. In addition, Complainant contends that the Respondent’s current message: “We are out of business,” on its website located at <aquamassage.com> disrupts Complainant’s business because customers associating the domain name with Complainant assume Complainant is out of business.
The Panel may find that because Respondent and Complainant are in the same specialized field, Respondent’s choice of a domain name that is identical to and confusingly similar to Complainant’s established mark is evidence of bad faith. See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).
Because the Panel looks to the overall circumstances in determining whether or not the record shows bad faith, this Panel may also find that because Respondent was a former distributor for Complainant, with full knowledge of Complainant’s mark, Respondent’s use of Complainant’s mark in its domain name is evidence of bad faith. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding "Respondent's registration of the company name of his former employer as a domain name is an act of bad faith").
Complainant also contends that Respondent’s registration of the domain name is evidence of bad faith because of Respondent’s false claims that he is the manufacturer of Complainant’s products. The suggestion of a nonexistent affiliation with Complainant is evidence of bad faith on the part of Respondent pursuant to ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks).
Complainant also contends that Respondent’s use of the domain name to prevent Complainant from reflecting its own mark in Internet commerce is evidence of bad faith. See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name (by Respondent that incorporates another’s trademark) goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”).
Respondent urged that Respondent did not act in bad faith because Respondent is not a competitor of Complainant; however, these circumstances are different from those in which a Respondent has obtained relief on that basis. See Gorstew Ltd. & Unique Vacations v. Twinsburg Travel, FA 94944 (Nat. Arb. Forum July 7, 2000) (finding no bad faith under Policy ¶ 4(b)(iii) because Respondent and Complainant are not truly competitors but Respondent acted in good faith). Here, Respondent is a former distributor of Complainant’s product and Respondent knowingly registered Complainant’s mark in a domain name and then knowingly diverted Complainant’s business to its own website under that name. Respondent also contends that it registered the domain name in good faith and that its use of the domain name to promote a legitimate business is evidence of its good faith registration and use. See DJF Assocs,. Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of dispute). These facts, however, suggest that Respondent registered the name using Complainant’s mark, although he knew Complainant had a prior interest in the mark and that Respondent has used it to divert and interrupt Complainant’s business.
The Panel finds that the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Having found that all three elements necessary to prevail have been satisfied and that the requested relief should be granted; it is accordingly, Ordered, that the domain name in issue shall be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 4, 2001.
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