PADI Americas, Inc. v. Richard Beaulac / ScubaDive Vietnam
Claim Number: FA1711001756927
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 NAMES
The domain names at issue are <padi.today>, <padi.store>, <padi.news>, <padi.international>, <padi.blog>, <padi.asia>, <divepadiworld.com>, <padici.com>, and <divepadi.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2017; the Forum received payment on November 2, 2017.
On Nov 05, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <padi.today>, <padi.store>, <padi.news>, <padi.international>, <padi.blog>, <padi.asia>, <divepadiworld.com>, <padici.com>, and <divepadi.world> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 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.today, postmaster@padi.store, postmaster@padi.news, postmaster@padi.international, postmaster@padi.blog, postmaster@padi.asia, postmaster@divepadiworld.com, postmaster@padici.com, postmaster@divepadi.world. Also on November 8, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, PADI Americas, Inc., is the world’s leading scuba diver training organization. Complainant has rights in the PADI mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,243,542, registered Jun. 28, 1983). See Compl. Annex D. In addition, Complainant has acquired extensive common law rights in the PADI marks through use in commerce and has obtained considerable goodwill through its use thereof. Respondent’s domain names are confusingly similar to Complainant’s PADI mark, as the names each incorporate the mark in its entirety and add various top-level domains (“TLDs”). Three of the domain names also add descriptive terms to the mark.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the disputed domain names, nor has Complainant authorized or licensed Respondent to use the PADI mark in any manner. Respondent’s use of the disputed domain names does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, each of the names resolve either to websites which offer services related to scuba diving in direct competition with Complainant’s business, or parked pages. See Compl. Annexes H and I.
Respondent registered and is using the disputed domain names in bad faith. Respondent uses some of the names to create a likelihood of confusion with Complainant’s PADI marks. See Compl. Annexes H and I. Additionally, Respondent is passively holding the remaining domain names. Further, it is clear Respondent knew of Complainant’s goods and services at the time it registered and subsequently used the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company and the world’s leading scuba diver training organization.
2. Complainant has established its trademark rights in the PADI mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,243,542, registered Jun. 28, 1983).
3. Respondent registered the disputed domain names as follows:
<padi.today> September 10, 2017
<padi.store> September 10, 2017
<padi.news> September 10, 2017
<padi.international> August 16, 2017
<padi.blog> August 18, 2017
<padi.asia> September 9, 2017
<divepadiworld.com> October 5, 2017
<padici.com> May 25, 2017
<divepadi.world> October 11, 2017.
4. The domain names resolve either to websites which offer services related to scuba diving in direct competition with Complainant’s business, or parked pages.
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.
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(f), 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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the PADI mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,243,542, registered Jun. 28, 1983). See Compl. Annex D. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore finds that Complainant’s registration of the PADI mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s PADI mark. Complainant argues Respondent’s disputed domain names are identical or confusingly similar to the PADI mark, as the names each incorporate the mark in its entirety and add various TLDs. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel therefore determines the <padi.today>, <padi.store>, <padi.news>, <padi.international>, <padi.blog>, and <padi.asia> domain names to be identical or confusingly similar to the PADI mark per Policy ¶ 4(a)(i).
The <divepadiworld.com>, <padici.com>, and <divepadi.world> domain names not only incorporate the PADI mark in its entirety and add a TLD, but also add a descriptive term. Addition of a descriptive term to a mark is not sufficient to distinguish the domain name per Policy ¶ 4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark). The Panel therefore finds the <divepadiworld.com>, <padici.com>, and <divepadi.world> domain names to be confusingly similar to the PADI mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PADI
mark and to use it in its domain names, adding in three cases a descriptive word;
(b) Respondent registered the disputed domain names as follows:
<padi.today> September 10, 2017
<padi.store> September 10, 2017
<padi.news> September 10, 2017
<padi.international> August 16, 2017
<padi.blog> August 18, 2017
<padi.asia> September 9, 2017
<divepadiworld.com> October 5, 2017
<padici.com> May 25, 2017
<divepadi.world> October 11, 2017 ;
(c) The domain names resolve either to websites which offer services related to scuba diving in direct competition with Complainant’s business, or parked pages;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names, as Respondent is not commonly known by the domain names, nor has Complainant authorized Respondent to use the PADI mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Richard Beaulac / ScubaDive Vietnam.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain names;
(f)Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain names is demonstrated by its failure to use the names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends the <padi.international> and <padi.blog> domain names resolve to webpages which compete with Complainant’s business. Use of a domain name to compete with a complainant is not a use demonstrative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”). Complainant contends that the <padi.international> domain name redirects to the <worlddivers.org> website, which provides diving programs and memberships in competition with Complainant’s business. See Compl. Annex H. Similarly, the <padi.blog> domain name resolves to a website with a blog which displays the PADI marks and provides information about scuba diving. See Compl. Annex. I. The Panel agrees with Complainant that this is competitive behavior which demonstrates Respondent’s lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii);
(f) Complainant also argues that Respondent’s remaining domain names, <padi.today>, <padi.store>, <padi.news>, <padi.asia>, <divepadiworld.com>, <padici.com>, and <divepadi.world> resolve to parked pages. Where a respondent has made no demonstrable preparations to use a domain name, or when the domain name resolve to parked pages, it can be evidence the respondent does not have rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) and (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”); see also Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant does not provide evidence as to the manner of webpage to which the mentioned seven (7) domain names resolve. However, the Panel determines in all the circumstances Respondent’s use of the domain names indicate Respondent lacks rights and legitimate interests in the same.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has registered and used the <padi.international> and <padi.blog> domain names in bad faith by attempting to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s PADI marks. An attempt to gain commercially by creating confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s domain name and resolving websites can be evidence of bad faith per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The Panel recalls Complainant’s contentions that the two (2) domain names resolve to websites which offer scuba diving related services in competition with Complainant’s business. See Compl. Annexes H and I. Complainant presumes Respondent benefits commercially from its behavior. The Panel agrees and finds Respondent registered and used the <padi.international> and <padi.blog> domain names in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant also submits that Respondent’s failure to use the <padi.today>, <padi.store>, <padi.news>, <padi.asia>, <divepadiworld.com>, <padici.com>, and <divepadi.world> domain names actively is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s contention that the domain names resolve to parked websites. The Panel may agree this constitutes inactive holding and finds Respondent’s failure to use the domain names to be evidence of its bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the PADI mark at the time it registered and subsequently used the domain names. Complainant argues that Respondent’s use of the <padi.international> and <padi.blog> domain names to offer scuba diving related services indicates that Respondent had actual knowledge of Complainant's mark and rights. See Compl. Annexes H and I. Complainant also contends that it has had previous interaction with Respondent with regards to its unauthorized use of the PADI mark. See Compl. Annexes G and K. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the PADI mark and in view of the conduct that Respondent engaged in when using the disputed domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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.today>, <padi.store>, <padi.news>, <padi.international>, <padi.blog>, <padi.asia>, <divepadiworld.com>, <padici.com>, and <divepadi.world> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 1, 2017
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