Claim Number: FA0707001029067
Complainant is Leisure Pools
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leisurepools.com>, registered with Signature.
The undersigned, Daniel B. Banks, Jr., Honorable Karl V. Fink and Professor David E. Sorkin, certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 9, 2007.
On July 9, 2007, Signature confirmed by e-mail to the National Arbitration Forum that the <leisurepools.com> domain name is registered with Signature and that the Respondent is the current registrant of the name. Signature has verified that Respondent is bound by the Signature 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 July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 13, 2007 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 August 10, 2007.
A timely Additional Submission from Complainant was received and determined to be complete on August 15, 2007. A timely Additional Submission from Respondent was received and determined to be complete on August 21, 2007. Both submissions were considered by the Panel.
On August 17, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Honorable Karl V. Fink, (Ret.), Professor David E. Sorkin, and Daniel B. Banks, Jr., as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In 2000, Complainant’s related company and predecessor in interest,
Leisure Pools Marketing and Spas Manufacturing Pty Ltd and its related company
Leisure Pools Marketing Pty Ltd (“LPM”) began selling swimming pools under the
mark “Leisure Pools” in
In January 2003, LPM formed
Since at least 2000, Complainant and its related companies have held common law rights to use and protect this mark in connection with the sale of swimming pools. Complainant asserts that it has held common law rights in the mark dating back to at least 1998.
Respondent has been using the disputed domain name, <leisurepools.com>, which is identical or confusingly similar to Complainant’s mark. Because of the similarity of names, it is likely that confusion would arise between the Complainant’s trademark and the domain name.
Respondent has no rights or legitimate interests in the domain name and is not licensed by Complainant to use the mark. During its existence, the Respondent’s web site has either been under construction or been used to divert Complainant’s customers to Complainant’s competitors. Such a use is neither a good faith offering of goods and services nor a legitimate noncommercial use in conformance with ICANN policy. A recent inspection of the site shows links to swimming pool related sites but provides no legitimate service. It can be inferred that Respondent has not intended to use the site or its domain name for any legitimate purpose and merely utilizes the name to tarnish Complainant’s trademark.
Finally, besides its listing as registrant of the disputed domain name, no evidence could be found that Leisure Pools Online Ltd. exists as a legitimate and organized entity. Attempts to contact Respondent yielded no response. There is no online footprint for a company that purports to be by name “Online.” Complainant has a significant presence both online and in the general marketplace. Respondent cannot be said to be commonly known or identified by its domain name.
Respondent has registered and continues to use Complainant’s trademark
in bad faith. Complainant has used its
trademark in commerce since at least 2000 when its Australian affiliate and
related company first started the business.
The trademark has been continuously used in the
In a good faith effort to resolve the dispute, Complainant has offered by mail and e-mail, a reasonable settlement. Complainant has also attempted to contact Respondent by phone but has received no response. It is reasonable to infer that Respondent’s bad faith use will continue.
There is absolutely no basis for transferring the disputed domain name <leisurepools.com> (the” Disputed Domain”) to Complainant. Complainant has failed to meet its burden of proof under each of the prongs of the Policy and the Complaint must therefore be dismissed. Respondent registered the Disputed Domain because it incorporates the descriptive term “leisure pools.” The Disputed Domain became available for anyone to register when it expired and was deleted by the registrar after the previous registrant failed to renew it.
“Leisure pools” is a descriptive term that describes a pool used for leisure. For this reason, Respondent has a legitimate interest. Moreover, Respondent has used the domain name in connection with bona fide goods and services in the nature of pay-per-click ads which further establishes its legitimate interest. The descriptive term “leisure pools” is in common use by many third parties, appearing on over 57,000 third party web pages.
is absolutely no evidence that Respondent had knowledge of Complainant, its
business, its web site or trademarks when it registered the Disputed Domain,
and Complainant has proffered no evidence to the contrary. Respondent did not have Complainant’s
trademark in mind when it registered the Disputed Domain. In fact, it was impossible for Respondent to
have had knowledge of Complainant’s registered marks – and bad faith
registration cannot be based on those marks - since the marks were registered after
the Disputed Domain was registered.
Complainant did not apply for its
case can only be based on its alleged common law trademark which Complainant
alleges to have begun using in
Accordingly, because Complaint has failed to meet its burden under the Policy, the Complaint must be dismissed.
C. Complainant’s Additional Submission
Respondent has failed to refute the evidence provided in the Complaint and has through its response, raised the suspicion that it is hiding its identity as a known cyber-squatter. Though it certified that the information in the Response was “complete and accurate,” Respondent has left out key details about its identity. Namely, Respondent has the same address as a known cyber-squatter and fails to give any clarifying evidence in its manager’s declaration.
Respondent goes on to allege (as a fact) that Complainant’s mark is merely descriptive and that Complainant has no common law rights because there is no evidence of secondary meaning. Respondent fails to note that both the United States Patent and Trademark Office and the Australian Trademark Office refused to make a legal determination of descriptiveness. In addition to the evidence already offered in its complaint, Complainant comes forward with further evidence that before 2002, Complainant already had a web page advertising to the world, a multi-million dollar business and a successful network of dealers and franchises all using the Leisure Pools name and mark. Complainant’s common law rights were firmly in place prior to Respondent’s registration, leaving it no rights or legitimate interests in the domain name.
Finally, Respondent claims that it had no knowledge of Complainant’s mark when it registered its domain name. Respondent fails to realize that Complainant’s mark was so widely known that Respondent had constructive knowledge. Respondent also fails to address its affiliation with or identity as a known cyber-squatter. Bad faith registration and use can be inferred not only from this relationship, but also from Respondent’s constructive knowledge of Respondent’s mark and from its use as a vehicle to misuse Complainant’s mark.
D. Respondent’s additional submission.
Complainant argues that Respondent failed to fully identify itself in the Response and that this should, somehow, raise an inference of bad faith. This is not true. The registration information for the Disputed Domain is correct. It is the provision of “false or misleading whois contact information” that constitutes bad faith. See e.g., Mattel, Inc. v. Rancomp Ltd., FA 579563 (Nat. Arb. Forum Nov. 29, 2005); see also Procter & Gamble Co. v. Hong Gil Dong, FA 572962 (Nat. Arb. Forum Nov. 10, 2005). This has not occurred here. None of the contact information is false, and Complainant obviously has had no difficulty contacting Respondent in order to facilitate the proceedings. Here, the WHOIS registration for the Disputed Domain provides Respondent’s name, a postal address, e-mail address as well as a phone number. The only information missing is a fax number. This inadvertent ministerial omission does not constitute bad faith under the Policy because Respondent had no intent to mislead.
argues the Declaration of May Greenberg should not be given any credibility
because she failed to provide an address or jurisdiction where she made the
Declaration. This has been corrected. Greenberg
Dec. 2. is an amended declaration that states
that the Declaration was made in the State of
Complainant’s allegation that Respondent is also known as, or is associated with, Cayman Trademark Trust, weathernetwork, Modern Web Development, Trademark, Modern Limited-Cayman Web Development c/o Domain Administrator, or Gico is completely erroneous. Neither Respondent, nor anyone affiliated with it, is affiliated or connected in any way with these entities. While these companies apparently have used a mailing address of PO Box 533WB, which is identical to Respondent’s, this PO Box is not authorized to receive mail for these entities, and Respondent has no knowledge why this address was listed for the companies referenced in Complainant’s Additional Submission.
The descriptive nature of the term is relevant in
determining Respondent’s right to retain a domain name incorporating a
descriptive term, notwithstanding the existence of a
trademark. Complainant’s mark obviously is not inherently
distinctive. Complainant argues that this Panel must find the mark to be
inherently distinctive because Complainant was able to gain trademark rights to
the term in
There is no evidence Respondent had knowledge of Complainant’s trademark or its alleged common law trademark when it registered the Disputed Domain. Since Complainant’s registered marks were not in existence when the Disputed Domain was registered, there is no basis to deem Respondent as having constructive knowledge of the mark.
Complainant argues that
Respondent had constructive knowledge of the mark based on its registration of
the <leisurepools.com.au> because it argues that Respondent should
have conducted a WHOIS look-up to find Complainant <leisurepools.com.au>
registration. This argument is flawed. First, the fact that an
entity has registered a domain name for a descriptive term is not evidence that
it is claiming trademark rights to the term. Moreover, there are dozens
of country Tld designators. Certainly, a domain name registrant is not
obligated to conduct a WHOIS domain search for every country designation.
Cf. Allocation Network GmbH v.
Gregory, D2000-0016 (WIPO Mar. 24, 2000) (“nothing in the Policy can be
construed as requiring a person registering a domain name to carry out a prior
trademark search in every country of the world for conflicting trademark
rights”). Respondent does not operate in
Complainant had not registered its trademark when the Disputed Domain was registered and it has no evidence that Respondent had knowledge of its alleged common law trademark. Accordingly, even if Respondent can prove that it had a common law trademark prior to Respondent registering the Disputed Domain, it cannot prove that Respondent had knowledge, or even that it should have had knowledge, of a trademark identical or confusingly similar to the Disputed Domain. Accordingly, as argued in the Response, the Complaint should be denied.
As noted in the Response, Respondent has a legitimate interest based on both its registration of a domain name incorporating a descriptive term and its use of the domain name to post advertising links related to that descriptive meaning. The arguments are well set forth in the Response and will not be repeated here.
The Panel finds that the Complainant has failed to meet its burden of proof with regard to the element of bad faith registration of the disputed domain name. The Panel therefore declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002).
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Paragraphs 4(b)(i) through (iv) of the Policy provides examples of circumstances, in particular, but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
After examination of the evidence presented in this case, the panel does not find any of those circumstances sufficient to warrant a finding of bad faith registration. Specifically the Panel finds that the Complainant failed to meet its burden of proof of bad faith registration of the disputed domain name under Policy 4(a)(iii). Complainant’s allegations of bad faith registration are without sufficient facts to support such allegation. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Having found that Complainant failed to establish the essential element of bad faith registration, the Panel declines to analyze the other two elements of the Policy.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Daniel B. Banks, Jr., Panel Chair
Honorable Karl V. Fink, Panelist
Professor David E. Sorkin, Panelist
Dated: August 28, 2007
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