Jandy Industries, Inc. v. Jeff Yurtin and WWW Development Inc.
Claim Number: FA0810001230025
Complainant is Jandy Industries, Inc. (“Complainant”), represented by Katherine
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jandypoolproducts.com> and <jandypoolsupplies.com>, registered with Enom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 20, 2008.
On October 20, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <jandypoolproducts.com> and <jandypoolsupplies.com> domain names are registered with Enom, Inc. and that the Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 October 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2008 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 email@example.com, firstname.lastname@example.org by e-mail.
Respondent’s Response was received in electronic form on November 19, 2008, after the Response deadline had passed; and no hard copy was received prior to the Response deadline. (In subsequent correspondence Respondent maintained that the Response was submitted on November 18, 2008.) Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. In the deficient Response, the Respondent addressed various aspects of the Complaint, and requested an extension of time “to provide a better response prepared by an attorney familiar with ICAAN [sic] rules and regulations.” However, the Respondent did not submit a formal extension request pursuant to Paragraph 6(a) of the Forum’s Supplemental Rules, which requires inter alia that any such request be submitted before the deadline for submission of the Response, that it state the length of the requested extension, and that it be accompanied by payment of an extension fee. In light of the Panel’s disposition of this case, the Panel finds it unnecessary to refer to the deficient Response or to permit the Respondent a further opportunity to submit material for the Panel’s consideration.
On November 22, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is the owner of JANDY, a registered trademark for swimming pool cleaning equipment which it has used in commerce since 1961. Complainant alleges that the disputed domain names are confusingly similar and identical to its trademark; that Respondent is using the domain names to market pool products and accessories covered under its trademark registration. Complainant further alleges that the web page at <jandypoolproducts.com> bears the caption “JandyPoolProducts.com for Swimming Pools Etc.,” and therefore is likely to create initial interest confusion among consumers and to give the impression that Respondent is affiliated with Complainant.
Complainant contends that Respondent lacks rights or legitimate interests in the domain name <jandypoolproducts.com> because it incorporates Complainant’s mark and contains the name of Complainant’s parent company, Jandy, Inc., formerly known as Jandy Pool Products, Inc. Complainant asserts that Respondent and Respondent’s business are not known by the domain names and their names do not contain “Jandy.” Complainant states that it has not granted Respondent the right to use its mark.
Finally, Complainant contends that Respondent is using the disputed domain names in bad faith, for the purpose of disrupting and diverting Complainant’s business and intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and products offered for sale on the site. Complainant asserts that customers seeking Complainant’s website may be confused into using Respondent’s website, believing that they are in fact purchasing directly from Complainant or another company endorsed or authorized by Complainant.
For the reasons set forth above, the Panel has not considered the deficient Response.
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has failed to prove that Respondent lacks rights or legitimate interests in respect of the disputed domain names, and that Complainant has failed to prove that Respondent registered and is using the disputed domain names in bad faith.
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.
The disputed domain names combine Complainant’s registered trademark with terms that describe the merchandise covered by the mark. The domain names are therefore confusingly similar to the mark.
Based upon the allegations in the Complaint and the limited supporting evidence provided by Complainant, it appears to the Panel that Respondent is a retailer of swimming pool products, doing business as “Swimming Pools Etc.;” and that the website to which the disputed domain name <jandypoolproducts.com> resolves is being used by Respondent for the purpose of marketing Jandy products. There is no indication or allegation that such products are anything but genuine Jandy products. It is not clear whether Respondent is an authorized dealer or merely an independent reseller of Jandy products. At the top of the website is the statement “JandyPoolProducts.com from Swimming Pools Etc” and, in somewhat smaller type, “Looking for Jandy’s website click here.”
A reseller or authorized dealer of trademarked merchandise may legitimately use a domain name incorporating the trademark if (1) the reseller is actually offering the merchandise for sale; (2) the reseller uses the domain name for a website that promotes only the trademarked merchandise; (3) the website accurately discloses the reseller’s relationship with the trademark owner; and (4) the reseller does not try to corner the market in domain names incorporating the trademark. ITT Mfg. Enters., Inc. v. Nicoll, D2008-0936 (WIPO Nov. 7, 2008). In this case it appears that Respondent’s use of <jandypoolproducts.com> meets all of these requirements, and thus that Respondent likely has rights or legitimate interests in respect of that domain name. The Panel therefore concludes that Complainant has failed to meet its burden of proving that Respondent lacks rights or legitimate interests in <jandypoolproducts.com> for purposes of Paragraph 4(a)(ii) of the Policy.
The Complaint does not contain any allegations relating to Respondent’s use of the other disputed domain name, <jandypoolsupplies.com>. For this reason, and in light of the above analysis, the Panel reaches the same conclusion with regard to this domain name.
Based upon the evidence before the Panel, it appears that Respondent registered and used the disputed domain names for the purpose of marketing genuine trademarked goods (albeit, perhaps, without specific authorization from Complainant). As discussed above, that use is likely legitimate. Even if it is otherwise, in this Panel’s view it does not rise to the level of bad faith. At most this case involves a legitimate trademark dispute rather than a clear instance of cybersquatting, and it therefore is not susceptible to adjudication under the Policy. See Second Staff Report on Implementation Documents for the Uniform Domain Dispute Resolution Policy, (Oct. 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>, at ¶ 4.1(c). The Panel therefore concludes that Complainant has not sustained its burden of proving that the disputed domain names were registered and being used in bad faith.
Having considered all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: December 9, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum