PADI Americas, Inc. v. Richard Beaulac / ScubaDive Vietnam
Claim Number: FA1708001743915
Complainant is PADI Americas, Inc. (“Complainant”), represented by Diane M. Reed of Knobbe Martens Olson & Bear LLP, California, USA. Respondent is Richard Beaulac / ScubaDive Vietnam (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <padi.world>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2017; the Forum received payment on August 9, 2017.
On August 14, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <padi.world> 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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2017 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@padi.world. Also on August 17, 2017, 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.
A timely Response was received and determined to be complete on September 10, 2017.
On September 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the PADI mark in connection with its marketing of goods and services related to scuba diving. Complainant holds a registration for the PADI service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 1,005,461, registered Feb. 25, 1995). Respondent’s <padi.world> (registered Apr. 4, 2017) is identical to Complainant’s mark because it merely appends the “.world” generic top-level domain (“gTLD”) to the mark.
ii) Respondent has no rights or legitimate interests in <padi.world>. Respondent has not been commonly known by the domain name. Complainant has never authorized Respondent to use the PADI mark. Respondent is not making either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name. The domain name resolves to a website offering services related to scuba diving gear in competition with Complainant.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent’s competing use is disruptive to Complainant’s business under Policy ¶ 4(b)(iii) because it generates reputational risks and causes Complainant potential loss of customers. This use also imputes Policy ¶ 4(b)(iv) because Respondent’s identical domain name with competing resolving use likely nets Respondent commercial gain. Lastly, Respondent had actual and/or constructive knowledge of Complainant and its mark when registering and using the domain name, demonstrating nonexclusive bad faith under Policy ¶ 4(a)(iii).
B. Respondent
i) Complainant’s trademark is not valid as it is an acronym that is part of a logo. Respondent’s domain name is distinguished from the PADI mark because it adds the “.world” extension to represent its scuba diving agency.
ii) Respondent has made a bona fide use of the domain name. Respondent used to be a part of Complainant’s organization. Complainant terminated Respondent’s membership, and Respondent set out as a competitor. Respondent has been commonly known by the terms of the domain name as per its use in context within its business.
iii) Respondent did not intend to disrupt the business of Complainant; rather, it is Complainant who is attempting to disrupt the business of Respondent through the initiation of this dispute.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 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; 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.
Complainant uses the PADI mark in connection with its marketing of goods and services related to scuba diving. Complainant contends that it holds a registration for the PADI service mark, which is on file with the USPTO (Registry No. 1,005,461, registered Feb. 25, 1995). A USPTO registration confers rights in a mark, regardless of where a respondent resides. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). Accordingly, while Respondent reportedly resides in Vietnam, the Panel nevertheless agrees Complainant has established rights in the PADI mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <padi.world> (registered Apr. 4, 2017) is identical to Complainant’s mark because it merely appends the “.world” gTLD to the mark. A descriptive gTLD may serve to enhance confusion. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017) (“Appending a top-level domain that describes a complainant’s business adds to confusing similarity.”). Here, Complainant provides an example of one of its logos, which it alleges resembles a globe, or “world.” The Panel agrees that Respondent indeed attempted to draw an association with Complainant and its mark in creating the <padi.world> domain name, and therefore the domain name is confusingly similar to the PADI mark.
While Respondent contends that <padi.world> is comprised of common and generic/descriptive terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Therefore, the Panel concludes that Complainant has satisfied the element under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues that Respondent has no rights or legitimate interests in <padi.world>. In so arguing, Complainant contends Respondent has not been commonly known by the domain name, and that Complainant has never authorized Respondent to use the PADI mark. Implicit is an argument Respondent is not commonly known by the domain name. WHOIS information is typically viewed as helpful under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel notes the WHOIS of record lists “Richard Beaulac / ScubaDive Vietnam” as registrant. Accordingly, the Panel agrees Respondent is not commonly known by <padi.world> as it bears no resemblance to the WHOIS.
Respondent alleges it has been commonly known by the terms of the domain name as per its use in context within its business. Business use may support a respondent’s rights under Policy ¶ 4(c)(ii). See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name). There is no evidence that Respondent has held itself out to the world as “padi.world” on its resolving site or otherwise, and Respondent has not provided any evidence which would refute Complainant’s showing. Therefore, the Panel agrees Respondent is not commonly known by <padi.world> under Policy ¶ 4(c)(ii).
Complainant also claims Respondent is not making either a bona fide offering of goods or services by means of, or a legitimate noncommercial or fair use of, the domain name. The domain name resolves to a website offering services related to scuba diving gear in competition with Complainant. Competitive use of an identical or confusingly similar domain name may indicate a lack of rights and legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Respondent is alleged to be engaging in activities that “compete directly with Complainant’s business.” These activities include redirection to <worlddivers.org> and offering goods and services related to scuba diving according to Complainant’s evidence displaying the message, “Change your life (sic). Dream and make it happen. We can certify you from basic Open Water Course to Dive master and from Open Water Instructor to Instructor Trainer as well as Instructor Examiner.” The website seems to offer courses in a variety of aquatic skills, like “Commercial Diving,” “Public Safety Diving,” and “Mermaiding.” The Panel finds this use competes with Complainant and as such does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent contends that Complainant is attempting to silence it as a competitor, stating, “I become (sic) their biggest competitors and challenger within the diving industry not only in Vietnam but now expanding worldwide since 2017.” Unfortunately, Respondent provides no evidence other than self-serving allegations to support its status as a competitor, or of its legitimate offerings or consumer recognition that would refute Complainant’s prima facie case. Accordingly, the Panel finds that Respondent has failed to support a bona fide offering of goods or services based on Complainant’s screenshots of Respondent’s resolving website.
Respondent also argues that the terms of <padi.world> are common and generic/descriptive, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. However, the Panel does not agree with Respondent because the Complainant’s mark is not considered as being descriptive or generic simply because it is an acronym of an association.
As such, the Panel finds that Complainant has satisfied the element under Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the disputed domain name in bad faith. Specifically, Complainant contends that Respondent’s competing use is disruptive to Complainant’s business under Policy ¶ 4(b)(iii) because it generates reputational risks and causes Complainant potential loss of customers. This use also allegedly imputes Policy ¶ 4(b)(iv) because Respondent’s identical domain name with competing resolving use likely nets Respondent commercial gain. Competing use may implicate both prongs under bad faith. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel again notes Complainant’s evidence showing competing scuba diving services, and thus finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Respondent conclusively alleges it did not intend to disrupt the business of Complainant; rather, it is Complainant who is attempting to disrupt the business of Respondent through the initiation of this dispute. However, Respondent’s boastful attitude regarding the acquisition of several PADI-formative domain names seems to contradict its contention that it did not register and use <padi.world> in bad faith, especially when coupled with the allegation that it previously belonged to Complainant’s organization as a card-carrying member. The panel in Theresa Weiss v. FREE SPIRIT / FREE SPIRIT (LEGAL NAME), found the respondent involved to have engaged in spiteful actions based on the complainant’s unwillingness to engage with respondent for the sale of the domain names at issue, stating respondent “used the domain names to retaliate against Complainant for not submitting to his demands for money and to coerce Complainant into submitting to those demands.” FA1504001612808 (Forum May 27, 2015). Here, it seems this Respondent is engaging in similar activity. Respondent states, “[O]f course this domain name have a marketing value for WORLD DIVERS (.world) and we could consider selling it if it represents what we assess as is value toward our agency marketing and advertising. As any business deal, if the Complainant wants to acquire the domain name, they can always make an offer to buy it thru legal process.” Throughout the Response, Respondent appears bitter that Complainant did not come to Respondent first to negotiate on a price for the purchase of the domain name by stating that “The Complainant never contacted the respondent over this related FORUM/URDP complaint and wants to obtain this domain name making an offer for settlement to buy this domain name from WORLD DIVERS or myself but they prefer trying to ursurp it, hoping to have a FORUM decision in their favor.”). The Panel agrees that Respondent has only provided contentions and engaged in activities which strengthen the presumption of bad faith under Policy ¶ 4(a)(iii).
Next, Complainant asserts Respondent had actual and/or constructive knowledge of Complainant and its mark when registering and using the domain name, demonstrating nonexclusive bad faith under Policy ¶ 4(a)(iii). While “the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” the Panel looks to whether Respondent had actual notice of Complainant through “the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Here, Respondent has registered an identical domain name to Complainant’s PADI mark, claims to have been associated with Complainant’s organization before registering the domain name, uses the domain name to offer competing services as Complainant’s largest competitor, and boasts a domain portfolio with the recently acquired <padi.blog>, <padi.asia>, <padi.news>, <padi.store>, and <padi.today> according to Complainant’s evidence. The Panel agrees that the totality of the circumstances clearly indicates Respondent registered and used <padi.world> with actual knowledge of Complainant and Complainant’s rights in or to the PADI mark in bad faith under Policy ¶ 4(a)(iii).
Lastly, Respondent contends that <padi.world> is comprised entirely of common terms that have many meanings apart from use in Complainant’s PADI mark. Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not necessarily done in bad faith. However, as mentioned above, the Panel does not agree with Respondent because the Complainant’s mark is not considered as being descriptive or generic simply because it is an acronym of an association.
As such, the Panel determines that Complainant has satisfied the element under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <padi.world> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 27, 2017
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