Wave Industries, Inc. v. Angler Supply
Claim Number: FA0407000304784
PARTIES
Complainant
is Wave Industries, Inc. (“Complainant”),
represented by John A. Thomas of Glast, Phillips & Murray, P.C.,
13355 Noel Road, Suite 2200, Dallas, TX 75240.
Respondent is Angler Supply (“Respondent”),
represented by Douglas M. Isenberg
of Needle & Rosenberg, P.C., 999
Peachtree Street, Suite 1000, Atlanta, GA 30309-3915.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <wavebaits.com>
and <waveworms.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Jacques A. Léger Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 27, 2004; the Forum received a hard copy of the
Complaint on July 28, 2004.
On
August 2, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <wavebaits.com> and
<waveworms.com> are registered
with Go Daddy Software, Inc. and that Respondent is the current registrant of
the names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, 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
August 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 24,
2004 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@wavebaits.com and postmaster@waveworms.com by
e-mail.
A
timely Response was received and determined to be complete on August 24, 2004.
A
timely Additional Submission was received from Complainant on August 30, 2004.
On September 1, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Jacques A. Léger
Q.C. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant
alleges it has been using the WAVE and WAVE WORMS since February 2001.
Complainant
contends that it has spent at least $400,000 since that time advertising and
promoting its lures and the WAVE marks.
Complainant
alleges that it has sponsored four professional fishermen who travel the United
States fishing in tournaments and displaying the WAVE marks.
Complainant’s
lures are sold throughout the United States by retailers, such as Academy
Sports and Walmart, in the latter case, at more than 3,000 Walmart stores.
Complainant
has applied for U.S Federal Trademark Registration for its WAVE mark. This application is now pending in the U.S.
Trademark Office under Serial Number 76/435,681.
Complainant
is the owner of U.S. Federal Trademark Registration Nos. 2,785,756 for TIKI and
2,814,838 for the TIKI-MAN design.
Complainant
is in the business of making and selling fishing lures, particularly lures of
the soft-body or plastic-worm type.
Respondent
registered the domain names <waveworms.com> on February 6, 2003
and <wavebaits.com> on February 24, 2003.
The
domain names registered by Respondent are confusingly similar to Complainant’s
WAVE and WAVE WORMS marks, because they literally incorporate the distinctive
portion of Complainant’s trademarks.
In
the case of the <waveworms.com> domain, the domain name and the
WAVE WORMS mark are identical.
In
the case of the <wavebaits.com> domain, Respondent has
incorporated the distinctive portion of Complainant’s WAVE mark into a
combination adding only the word “baits.”
The
likelihood of confusion is high where the portion common to both the mark and
the domain is inherent distinctiveness, but the additional portion, “baits,” is
descriptive or generic.
Respondent
uses the <wavebaits.com> domain name in the text of the same web
page in exactly the same color and font as the Complainant’s registered
trademark of the Tiki-Man fisherman.
The
web page returned from the <waveworms.com> domain name is
ostensibly a discussion for Internet “worms” and viruses. This page contains a
prominent banner at the top using Complainant’s marks and color scheme asking
the user to “click here [If] you’re looking to purchase WAVE WORMS. This link
takes the user directly to the <wavebaits.com> website, not to
Complainant’s website, as a reasonable user might suppose.
When
the user arrives at the <wavebaits.com> site, he is presented with
a prominent graphic, again using Complainant’s TIKI-MAN mark.
It
is plain that Respondent is using Complainant’s WAVE and WAVE WORMS marks in
its domain name to deceive consumers and lure them to the online store
Respondent Angler Supply, Inc.
Respondent
has clearly intentionally attempted to attract, for commercial gain, Internet
users to its websites, and in particular, the online store at
<usangler.com>, by creating a likelihood of confusion with Complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s
websites.
Respondent
necessarily knew of Complainant and its trademarks before creating its websites
at the offending domain names, else he would not be selling Complainant’s
products.
B.
Respondent
Complainant
apparently does not own any trademark registrations for either WAVE WORMS or
WAVE BAITS, as Complainant fails to cite any such registrations in the
Complaint.
Although
Complainant states that it has applied for Federal registrations in the United
States for the WAVE mark (no. 76/435,681), this application is not evidence of
any rights that Complainant may have in the WAVE mark.
“Wave”
is a common term for use in connection with fishing lures.
Therefore,
“Wave” is not a distinctive term for use in describing fishing equipment,
Complainant’s application may not mature into a registration, and Complainant
cannot claim any exclusive rights to use the term “Wave.”
Respondent
is using the domain name in connection with a website that provides information
about, and sells services related to, “The Next Wave of Worms” on the Internet
(that is, disruptive computer programs), not in connection with services
offered by Complainant. Although
Respondent’s website using the <waveworms.com> domain name
previously carried an advertisement allowing visitors to purchase Complainant’s
products, Respondent eliminated this advertisement after becoming aware that
Complainant considered the advertisement to create confusion.
Respondent
is making a legitimate noncommercial or fair use of each of the domain names,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.
With
respect to the <waveworms.com>
domain name, Respondent is using the domain name in connection with a website
that provides information about, and sells services related to, “The Next Wave
of Worms” on the Internet (that is, disruptive computer programs), not in
connection with services offered by Complainant.
With
respect to the <wavebaits.com> domain name, Respondent is using
the domain name to forward to its website at http://www.angler
suplly.com/manufacturer.cfm?manufacturer=Wave%20Worms, where Respondent
legally offers for sale, products manufactured by Complainant. Further, because the term “Wave” is
popularly used in connection with fishing lures and related products,
Respondent has the right to use such a term in connection with its own attempts
to sell such products.
Respondent
is using each of the domain names for its own commercial purposes and has not
attempted to sell, rent or otherwise transfer registration of either of the
domain names to Complainant for valuable consideration in excess of
Respondent’s documented out-of-pocket costs directly related to either of the
domain names.
Complainant
operates a website using the <wavefishing.com> domain name, which allows
consumers to purchase Complainant’s products. Therefore, Respondent in using
the disputed domain names does not prevent Complainant from reflecting the WAVE
mark in a corresponding domain name.
Respondent
has not registered either of the domain names for the purpose of disrupting the
business of Complainant or of anyone else.
Respondent
has not intentionally attempted to attract, for commercial gain, Internet users
to Respondent’s website or other on-line location, by creating a likelihood of
confusion with Complainant’s mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s website or location or of a product or service
on Respondent’s website or location.
C.
Additional Submissions
Respondent
attempts to argue that Complainant has no trademark rights in the WAVE and WAVE
WORMS designations, because, first, the marks are not registered, and second,
WAVE cannot be a distinctive term for fishing lures. Both arguments are mistaken.
It
is well established that unregistered common law trademark rights are entitled
to protection, and that such marks can be the basis for a decision in favor of
the Complainant in a domain name dispute under the UDRP.
Complainant
has ample marks through long use and promotion.
FINDINGS
Having reviewed the evidence submitted by
the parties and their written representations, the Panel makes the following
findings:
-
Complainant has
rights in the WAVE and WAVE WORMS service marks.
-
The <waveworms.com> domain name is
identical to Complainant’s WAVE WORMS mark.
-
As to <wavebaits.com>,
it is neither identical nor confusingly similar to Complainant’s service marks.
-
Complainant has
satisfactorily met its burden to prove that Respondent has no rights or
legitimate interest in the <waveworms.com>
domain name.
-
Respondent
registered and used the <waveworms.com>
domain name 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 Complainant must prove cumulatively each of
the following three elements prior to obtaining an order that a domain name
ought to 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
asserts that it has established rights in the WAVE mark by filing for a
trademark registration with the United States Patent and Trademark Office (Ser.
No. 76/435,681 filed July 30, 2002).
The Panel finds that an application for mark is not per se sufficient to establish rights to a trademark for the
purposes of the UDRP, and therefore Complainant fails to establish rights in
the terms WAVE and WAVE WORMS as a result thereof. See Amsec Ent. v.
McCall, D2001-0083 (WIPO Apr. 3, 2001) (stating that Complainant’s pending
trademark applications do not establish an enforceable right to the mark until
a trademark registration is issued (subject of course to common law trademark
derived for use)); see also Razorbox, Inc. v.
Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (Complainant did not establish
the requisite trademark or common law rights to grant Complainant the necessary
standing for the Panel to find in its favor as Complainant’s pending trademark
application did not, in and of itself, demonstrate trademark rights in the mark
applied for). However, the Panel must
then ensure whether or not Complainant has otherwise satisfactorily showed
common law rights derived from its use of the WAVE and WAVE WORMS service
marks, as UDRP proceedings are open to both registered or common law trademark.
In
that regard, Complainant has argued that it has established common law rights
in the WAVE and WAVE WORMS marks (“WAVE” marks), having asserted that it has
used the marks continuously and extensively in commerce since February 2001 in
association with its fishing lures.
Furthermore, Complainant contends that it has spent at least $400,000 in
advertising its products under the WAVE marks through such mediums as national
trade shows and sponsoring professional fishermen, and this evidence has not
been contradicted nor challenged by Respondent. The Panel finds that Complainant has satisfactorily established
common law trademark through use. See
Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (wherein common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also S.A.
Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13,
2003) (holding that Complainant established rights in the descriptive
RESTORATION GLASS mark through proof of secondary meaning associated with the
mark).
Further,
Complainant asserts that the <waveworms.com>
domain name registered by Respondent is identical to Complainant’s WAVE WORMS
mark because the domain name fully incorporates the mark, adding only the generic
top-level domain (“gTLD”) “.com.” The
Panel concludes that the mere addition of a gTLD to Complainant’s mark is
irrelevant and does not negate the indentical nature of the domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(wherein the top level of the domain name such as “.net” or “.com” does not
affect the domain name for the purpose of determining whether it is identical
or confusingly similar).
Therefore, the Panel finds
that Complainant has satisfied its burden under Policy ¶ 4(a)(i) for the <waveworms.com>
domain name.
However with
respect to <wavebaits.com>, the
Panel finds that Complainant has failed to satisfactorily meet its burden to
show that it was either identical or confusingly similar to its WAVE marks,
when considered as a domain name.
Complainant also raised the question as to whether or not a cache or
metatag can be said to be an infringement of its trademark rights given that
Respondent has redirected <wavebaits.com> to <anglersupply.com>
which prominently display a graphic that includes Complainant’s
registered TIKI mark and logo (Reg. No. 2,785,756 issued November 25, 2003 and
Reg. No. 2,814,838 issued February 17, 2004). In other words, Complainant attempts to
assert that to a certain extent <wavebaits.com> is
indirectly confusing. Notwithstanding
the fact that this rises a fine legal point, the Panel concludes, that it lacks
jurisdiction to address it within the limited scope of the ICANN rules and
consequently will not address this question, reserving the rights of
Complainant to deal with this matter in another jurisdiction, should it so
elect.
Consequently,
with respect to the <wavebaits.com> domain name, the
Panel will refrain from commenting on the other elements, as Complainant’s has
failed to meet its burden on the first element.
Policy
¶ 4(a)(ii) inquires as to whether or not Respondent has any
rights or legitimate interests vested in the domain name. Policy
¶ 4(c) provides examples of circumstances that can demonstrate the existence of
such rights or legitimate interests:
(i) use of, or preparations to use, the domain name in connection with a
bona fide offering of goods or
services; (ii) the fact that Respondent
has commonly been known by the domain name; and (iii) legitimate non-commercial
or fair use of the domain name.
The
Panel finds that Respondent has no rights
or legitimate interests in the <waveworms.com>
domain name given there exists no relationship between Complainant and
Respondent that would give rise to any license, permission or authorization by
which Respondent could own or use the domain name. There is no evidence of any
commercial relationship between Complainant and Respondent which would entitle
Respondent to the marks.
In
addition, Complainant asserts that Respondent is not commonly known by the <waveworms.com> domain name and
was not commonly known by the domain name at the time Respondent registered the
disputed domain names. Therefore, the Panel finds that Respondent lacks rights
and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
Furthermore,
Complainant argues that the <waveworms.com>
domain name resolves to a website that appears to be a discussion site for
Internet worms and viruses. However,
Complainant asserts that the website contains a banner at the top of the page
that is in Complainant’s colors and invites users to purchase WAVE WORMS. The Panel concludes that Respondent’s use of
the domain name to divert Internet users to a website advertising Complainant’s
products is not a use in connection with 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). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May
6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill
surrounding that mark as a means of attracting Internet users to an unrelated
business was not a bona fide offering
of goods or services); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000).
Most of the time it is quite difficult,
if not impossible, to actually show bad faith with concrete evidence,
particularly given the limited scope of the inquiry in these proceedings; one
should not expect to easily find “the smoking gun”. While bad faith cannot be presumed, once Complainant has
presented some evidence pointing in that direction, it is then incumbent upon
Respondent to either respond or explain why its conduct should not be ascribed
to bad faith. The Panel’s understanding
of the Policy is that although the initial burden to prove Respondent’s bad
faith in the registration or the use of the disputed domain names relies
squarely on the shoulders of Complainant, such obligation is only to make out a
prima facie case, and once it has
done so, as the Panel finds it did in the present case, it is then incumbent
upon Respondent to either justify or explain its business conduct (if not
demonstrate the contrary). Respondent
is misplaced in relying on the defense of use of a generic term to prove a legitimate interest and lack of bad faith use and registration.
In particular, the Panel finds that Complainant has made a prima facie showing that Respondent has
no rights or legitimate interest
in the domain names and the domain names were registered or used in bad faith; and therefore the burden then
shifted to Respondent to prove the opposite. However, the Panel believes
Respondent has not met its burden for the following reason.
Further,
Complainant asserts that Respondent is using the <waveworms.com> domain name to divert Internet users to
Respondent’s commercial website for Respondent’s commercial gain. The Panel agrees that, in the present
circumstances, Respondent’s practice of diversion, motivated by commercial
gain, constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (stating that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through
Respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because
Respondent was using the confusingly similar domain name to attract Internet
users to its commercial website).
Furthermore,
Complainant contends that Respondent had actual or constructive knowledge of
Complainant’s rights in its WAVE marks when Respondent registered the <waveworms.com> domain name,
since the domain name diverts Internet users to websites, and the Panel so
finds. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th Cir. 2002) (the Panel agrees that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED for
the <waveworms.com> domain
name.
Accordingly, it is Ordered that the <waveworms.com> domain name be TRANSFERRED from Respondent to
Complainant.
However, as for
the <wavebaits.com> domain name,
Complainant has failed to meet its requirements on a balance of probabilities
as to the confusing similarity of the <wavebaits.com> domain
name and Complainant’s WAVE mark, and therefore the Complaint relating to <wavebaits.com> is DENIED.
Jacques A. Léger
Q.C., Panelist
Dated: September 20, 2004
Click Here to return to the main Domain Decisions Page.
Click
Here to return to our Home Page