National Arbitration Forum

 

DECISION

 

Leisure Pools USA Holdings, Ltd. v. Leisure Pools Online Services, Ltd.

Claim Number: FA0707001029067

 

PARTIES

Complainant is Leisure Pools USA Holdings, Ltd. (“Complainant”), represented by Marcus Benavides, 1020 N.E. Loop 410, Suite 270, San Antonio, TX 78209.  Respondent is Leisure Pools Online Services, Ltd. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <leisurepools.com>, registered with Signature.

 

PANEL

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.

 

PROCEDURAL HISTORY

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 postmaster@leisurepools.com 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. 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 Australia.  Also in 2000, LPM registered the domain name <leisurepools.com.au>.

 

In January 2003, LPM formed United States entities Leisure Pools USA, LLC and Complainant, Leisure Pools USA Holdings, Ltd. and brought over to the U.S. the swimming pool business and the rights to the Leisure Pools trademark.  Complainant  registered the mark “Leisure Pools” with the United States Patent and Trademark Office on September 14, 2004.  Subsequently, in January, 2007, the Australian branch of the business obtained registration of the Leisure Pools mark in Australia. 

 

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 United States since at least March of 2004.  Respondent did not register its domain name until 2002.  As early as March of 2003, Respondent has been constructing and running a web site intended to disrupt the business of Complainant by misleading consumers into believing that Respondent’s web site has some affiliation with or endorsement from Complainant.  Respondent accomplishes this by infringing upon Complainant’s mark and providing links to Complainant’s competitors. 

 

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. 

 

 

B. Respondent

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.

 

There 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 U.S. trademark until August 2003, more than one year after the Disputed Domain was registered, and the U.S. mark was not registered until September 2004, more than two years after the domain was registered.  Complainant’s Australian mark was not applied for until October 2005, more than three years after the Disputed Domain was registered, and the mark was not registered until February 2007, five years after the Disputed Domain was registered.  These registered marks cannot provide enforceable rights under the Policy and they cannot serve as a basis for establishing bad faith registration since Respondent could not have had knowledge of marks not in existence at the time when it registered the Disputed Domain.

 

Complainant’s case can only be based on its alleged common law trademark which Complainant alleges to have begun using in Australia in 2000 in connection with the sale of swimming pools.  But Complainant cannot succeed here either.  “Leisure pools” is a descriptive term subject to substantial third party use.  In order to prove common law trademark rights in 2000, Complainant would have to establish that its mark had secondary meaning – or that consumers associated exclusively (or almost exclusively) with the term “leisure pools,” a fact that has not been proven, and one that would be impossible to prove given the substantial third party use of the term. 

 

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. 

 

Complainant also 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 Florida, County of Palm Beach.  Complainant also argues that Respondent’s failure to reply to a cease and desist letter should further constitute bad faith.  It should not and there was nothing nefarious about Respondent’s failure to respond.  See e.g., Eauto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2007).  There, in denying the Complaint, the Panel expressly stated that the failure to reply to a cease and desist letter “is no evidence at all of bad faith,” and that a “domain name registrant has no obligation to respond to or even receive demand letters.”  Here, Respondent did not reply because it did not want to entertain Complainant’s inquiry to purchase the domain name. 

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 U.S. and Australia.  This is not the case.  The opinions of trademark examiners are not determinative in a UDRP proceeding.  An Administrative Panel may question the validity of a registered trademark for purposes of determining a Complainant’s rights under the UDRP.  “Indeed, genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration.” Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (citing Windsurfing Int’l, Inc. v. AMF, Inc., 613 F .Supp 933 (S.D.N.Y. 1985), aff’d in part and reversed in part 782 F.2d 995 (Fed. Cir. 1986).

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 Australia and would thus not have knowledge of Complainant.  See e.g. John Fairfax Pub., Pty v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (no bad faith registration on part of U.S respondent not on notice of Australian trademark). 

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.

 

FINDINGS

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).

 

DISCUSSION

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.

 

Registration and Use 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.

 

DECISION

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