Tri-County Aquatics, Inc. v. Jason Blake / The Pond Guy, Inc.
Claim Number: FA1307001509416
Complainant is Tri-County Aquatics, Inc. (“Complainant”), represented by Dean W. Amburn of Howard & Howard Attorneys PLLC, Michigan, USA. Respondent is Jason Blake / The Pond Guy, Inc. (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tricountyaquatics.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2013; the National Arbitration Forum received payment on July 12, 2013.
On July 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tricountyaquatics.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2013 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@tricountyaquatics.com. Also on August 27, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 19, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The domain name is identical or confusingly similar to a trademark/service mark in which the Complainant has rights;
Complainant, Tri-County Aquatics (“TCA”) is in the business of selling goods and services relating to aquatic management including ponds. Details about TCA’s goods and services can be found on TCA’s website at TriCountyAquatics.com. TCA’s business is located in Washington Township, Michigan.
TCA is the owner of common law and statutory rights in the mark TRI-COUNTY AQUATICS going back to 2001. TCA registered to do business in the county of Macomb, Michigan. TCA registered to pay taxes in Michigan. TCA advertises using its TRI-COUNTY AQUATICS mark. TCA’s registered its TRI-COUNTY AQUATICS mark with the Michigan Department of Licensing and Regulatory Affairs. The goods and services include: Aquatic management; aquatic vegetation control and management; sales, installation and maintenance of water fountains and aeration systems; water quality analysis; pond and lake consultation; fish stocking; retail sales of aquatic supplies and equipment.
TCA’s mark has been in use for over thirteen years and has become distinctive. Consumers of TCA’s goods and services are familiar with the benefits provided in connection with the TRI-COUNTY AQUATICS mark and the goods/services have achieved significant sales, reputation and goodwill over the years.
Respondent, The Pond Guy, Inc. (the “Pond Guy”) is a competitor of TCA and also sells goods and services relating to aquatic management including ponds. The Pond Guy resides in Armada, Michigan, which is less than fifteen (15) miles from TCA. More information about The Pond Guy can be found at ThePondGuy.com or WeKnowPonds.com.
The Pond Guy advertises in the same channels of trade as TCA. TCA and The Pond Guy have advertised in the same newspapers, usually next to each other, for several years. As is clear from this advertisement, The Pond Guy was well aware of TCA’s use of its mark in relation to the sale of goods and services for aquatic maintenance.
Notwithstanding, The Pond Guy, without the permission or consent of TCA, registered the domain name TriCountyAquatics.com on or around February 27, 2003. The TriCountyAquatics.com domain name redirects to WeKnowPonds.com which, as stated above, is another domain name for The Pond Guy’s company website.
The domain name TriCountyAquatics.com is identical to TCA’s mark, absent the hyphen between “Tri” and “County.” The Pond Guy’s use of the TriCountyAquatics.com domain name is done with intent to draw customers away from TCA which operates using the similar domain name Tri-CountyAquatics.com.
The Respondent has no rights or legitimate interests in respect of the domain name;
The Pond Guy does not now and never has had a legitimate reason for registering a domain name identical to the mark of its competitor, TCA.
The Pond Guy has never been commonly known by the domain name.
The Pond Guy is not licensed to do business as TRI-COUNTY AQUATICS.
The Pond Guy has no trademark or service mark rights in TRI-COUNTY AQUATICS.
The Pond Guy does not have TCA’s permission or consent to use TRI-COUNTY AQUATICS.
The Pond Guy is not making a legitimate non-commercial or fair use of the domain name, and is instead, with apparent intent of commercial gain, misleadingly using the domain name to divert and redirect consumers to The Pond Guy’s website (WeKnowPonds.com). The Pond Guy is blatantly palming off the good will and reputation of TCA.
The domain name was registered and is being used in bad faith.
The Pond Guy had notice of TCA’s use of its mark long before it registered the domain name in dispute. The advertisement by both TCA and The Pond Guy in the Romeo Observer dated May 29, 2002 shows that The Pond Guy was well aware of TCA and its mark. Further, The Pond Guy’s principal Jason Blake and TCA’s principal Nick Salvatore were at a time friends. Nick Salvatore worked for The Pond Guy from approximately 1997 until 2000. Yet, The Pond Guy chose to register a domain name and unfairly compete with his former friend residing less than fifteen (15) miles away. As a result, customers have been misled about the relationship between TCA and The Pond Guy and unfairly drawn away from TCA.
Under these circumstances The Pond Guy’s registration of the domain name in dispute was done in order to prevent TCA from obtaining the domain name and to interfere with TCA’s business. Although TCA has registered several similar domain names including, but not limited to, Tri-CountyAquatics.com, TriCountyAquatics.net, TriCountyAquatics.org, and TriCountyAquatics.biz, The Pond Guy has refused to relinquish the domain name most likely to be used by TCA’s customers, since it has the *.com extension.
On July 29, 2011 TCA served on The Pond Guy a request to cease and desist use of the domain name in dispute and requested transfer of the domain name to TCA. The Pond Guy never responded to TCA’s letter or request.
Rather than agree to a transfer of the domain name, and to compete fairly, The Pond Guy renewed its registration of the domain name at least two times after receipt of the cease and desist letter. The Pond Guy is acting in bad faith.
In a complaint filed in U.S. District Court for the Eastern District of Michigan, The Pond Guy alleges unfair competition and trademark infringement against another entity using the mark THE POND GUY. In paragraph 29 of that complaint, The Pond Guy alleges that it has protectable rights in “the following trade names, which have been associated by the public with Plaintiff’s goods and services for several years: (a) The Pond Guy.” Significantly, The Pond Guy does not identify as having any “protectable rights” in TRI-COUNTY AQUATICS. The Pond Guy alleges in paragraph 31 that it spends $1.2 Million a year advertising its name and has spent in excess of $10 Million. The Pond Guy is a much larger entity than TCA. The Pond Guy should be able to rely on its own trade name to support its business operations and engage in fair competition with TCA.
For all of these reasons, fundamental fairness and equity require transferring the domain name in dispute to its rightful owner, TCA.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant does not have a registered trademark. A trademark registration is not required under the Policy, as long as Complainant can illustrate some right in a mark regarding the disputed domain name. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant uses the TRI-COUNTY AQUATICS mark in connection with aquatic management, sales and installation and maintenance of water fountains, and retail sales of aquatic supplies and equipment. Complainant has used the TRI-COUNTY AQUATICS mark since 2001. Complainant also has advertised under the TRI-COUNTY AQUATICS mark. Complainant has done business under the mark through domain names such as <tricountyaquatics.com>. In Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011), the panel found that evidence of advertising, sales, and continuous use of a mark in trade were necessary for the finding of a common law interests under Policy ¶4(a)(i). Under these facts, Complainant has met its burden of proof, meaning Complainant has Policy ¶4(a)(i) rights in the mark dating back to 2001.
Respondent registered the <tricountyaquatics.com> domain name, which is identical to the TRI-COUNTY AQUATICS mark minus the hyphen. The domain name also features the generic top-level domain (“gTLD”) “.com” and removes the space between terms in Complainant’s claimed mark. Neither the gTLD, the absence of the hyphen, nor the removal of the mark’s spacing, are relevant because all of these changes are required under a domain name’s syntax. See Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (“[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming a Policy ¶4(a)(i) identical analysis.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The <tricountyaquatics.com> domain name is identical to the Complainant’s TRI-COUNTY AQUATICS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not known by the <tricountyaquatics.com> domain name, but instead does business as “Jason Blake” or “The Pond Guy, Inc.” Complainant has never licensed, authorized, or permitted Respondent to use the TRI-COUNTY AQUATICS mark—it would be foolish to allow such a direct competitor in a limited geographic area to use one’s marks. There is no evidence in the record to suggest Respondent is commonly known by the <tricountyaquatics.com> domain name under Policy ¶4(c)(ii) (including the WHOIS information). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent completes with Complainant in the same geographic region of Michigan. Respondent uses the <tricountyaquatics.com> domain name to redirect Internet users to Respondent’s <weknowponds.com> domain name where Respondent operates its own competing Michigan-based business. The record illustrates the disputed domain name resolves to <weknowponds.com>, which provides an address to Respondent’s competing business. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel determined that the use of a domain name to send Internet users to a competitor’s website failed to provide either a bona fide offering, or a legitimate noncommercial or fair use. Respondent’s use of the <tricountyaquatics.com> domain name to redirect Internet users to Respondent’s <weknowponds.com> domain name is neither a Policy ¶4(c)(i) bona fide offering of goods or services, nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the <tricountyaquatics.com> domain name to disrupt Complainant’s business. Complainant’s principal and Respondent’s principal were once co-workers at Respondent, and were good friends until Complainant’s principal struck out on his own. Respondent, through its principal, registered the <tricountyaquatics.com> domain name to hinder Complainant’s ability to do business on the Internet. The disputed domain name redirects Internet users to a domain name associated with Respondent’s competing business. The panel in Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005), found a bad faith attempt to disrupt the complainant’s business when the respondent was using the domain name to shuttle Internet users to its own, competing, business website. Respondent acted in Policy ¶4(b)(iii) bad faith by using this domain name to send Internet users to Respondent’s own business.
Complainant claims Respondent, as a competitor of Complainant in Michigan’s aquatics market, surely knew of Complainant when registering this domain name. Respondent frequently advertised making it clear the businesses competed. It is clear under the facts of this dispute Respondent had actual knowledge of Complainant’s use and rights in the TRI-COUNTY AQUATICS mark. Complainant sent Respondent two cease and desist letters. Respondent nevertheless renewed the disputed domain name twice (each of which is equivalent to a registration under the UDRP). Respondent certainly had actual knowledge of the mark and this was clearly a spite registration (or renewal). Respondent offers no explanation for its behavior. The Panel concludes Respondent registered the <tricountyaquatics.com> domain name in Policy ¶4(a)(iii) bad faith. See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tricountyaquatics.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 1, 2013
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