City Water International Inc. v. A c/o
Richard Hayhoe
Claim
Number: FA0504000462577
Complainant is City Water International Inc. (“Complainant”),
represented by John H. Simpson, of Aird and Berlis LLP, Barristers and Solicitors, BCE Place, Suite 1800, Box 754, 181
Bay Street, Toronto, ON M5J 2T9, Canada.
Respondent is A c/o Richard Hayhoe (“Respondent”), 45 Villarboit Cres, Concord, ON L4K
4R2, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cityh20.com>, registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 15, 2005.
On
April 14, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the domain name <cityh20.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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
April 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 10, 2005 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@cityh20.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 12, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <cityh20.com>
domain name is confusingly similar to Complainant’s CITY H2O mark.
2. Respondent does not have any rights or
legitimate interests in the <cityh20.com> domain name.
3. Respondent registered and used the <cityh20.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
City Water International Inc., provides point-of-use water filtration for
offices and related products and services to customers in the United States and
Canada. Complainant has used the CITY
H2O mark in commerce since May 1999 in connection with its products and
services. Since May 1999, Complainant
has used the <cityh2o.com> domain name to operate a website that markets
Complainant’s water filtration products to the public.
Respondent is a
direct competitor of Complainant in the water supply market located in the same
market area as Complainant. Respondent
registered the <cityh20.com> domain name on September 12,
2002. Respondent’s domain name resolves
to a website for Respondent’s competing water supply service.
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."
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.
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.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See 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.”); see
also Desotec N.V. v. Jacobi Carbons
AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows
a presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence).
Complainant
asserts that it has established common law rights in the CITY H2O mark through
Complainant’s continuous use of the mark in commerce since 1999. Respondent failed to contest this assertion,
therefore, the Panel finds that Complainant has rights in the CITY H2O mark to
Policy ¶ 4(a)(i). See SeekAm. Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant’s trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of the said name [<keppelbank.com>] in
connection with its banking business, it has acquired rights under the common
law).
Furthermore,
Respondent’s <cityh20.com> domain name is confusingly similar to
Complainant’s CITY H2O mark, as the domain name is identical to Complainant’s
mark but for the substitution of the number “0” for the letter “o” in
Complainant’s mark. Additionally,
Respondent’s domain name adds the generic top-level domain “.com” and omits the
space between the terms of Complainant’s mark.
Such minor changes are not enough to overcome a finding of confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000)
(finding that the domain name <0xygen.com>, with a zero in place of the
letter “O,” “appears calculated to trade on the complainant’s name by
exploiting likely mistake by users when entering the url address”); see also
Ziegenfelder Co. v. VMH Enters., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (finding confusing similarity between the
respondent’s domain name, <budgetsaver.com> and the complainant’s mark,
BUDGET$AVER); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <cityh20.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent, a direct
competitor of Complainant, is using the confusingly similar <cityh20.com>
domain name to operate a competing water supply business. The Panel finds that such competing use 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 Chip Merch., Inc. v. Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to the complainant’s mark and that the respondent’s use of
the domain names to sell competing goods was illegitimate and not a bona fide
offering of goods); see also Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the
respondent, as a competitor of the complainant, had no rights or legitimate
interests in a domain name that utilized the complainant’s mark for its
competing website).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<cityh20.com> domain name or authorized to register domain names
featuring Complainant’s CITY H2O mark.
Thus, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also 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”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <cityh20.com> domain name to operate
a website that directly competes with Complainant’s water supply business. The Panel finds that such use constitutes
disruption and is evidence that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
the complainant’s marks suggests that the respondent, the complainant’s
competitor, registered the names primarily for the purpose of disrupting the
complainant’s business); see also SR
Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001)
(finding it “obvious” that the domain names were registered for the primary
purpose of disrupting the competitor’s business when the parties are part of
the same, highly specialized field); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that the disputed domain names were registered
and used in bad faith where the respondent and the complainant were in the same
line of business in the same market area).
Because
Respondent’s <cityh20.com> domain name is confusingly similar to
Complainant’s CITY H2O mark, consumers accessing Respondent’s domain name may
become confused as to Complainant’s affiliation with the resulting
website. Thus, Respondent’s commercial
use of the disputed domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (finding that the respondent’s use of the <saflock.com> domain name
to offer goods competing with the complainant’s illustrates the respondent’s
bad faith registration and use of the domain name pursuant to Policy ¶
4(b)(iv)); see also Busy Body,
Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad
faith where the respondent attempted to attract customers to its website,
<efitnesswholesale.com>, and created confusion by offering similar
products for sale as the complainant).
Furthermore, the
Panel finds that Respondent registered the disputed domain name with actual
knowledge of Complainant’s rights in the CITY H2O mark due to the obvious
connection between Respondent’s website and Complainant’s business. Registration of a domain name that is
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights is tantamount to bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.”); see also Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the respondent “must have known about the complainant’s
mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cityh20.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
May 25, 2005
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