Aquion, Inc. v. RainSoft of Cincinnati
Claim Number: FA1403001549605
Complainant is Aquion, Inc. (“Complainant”), represented by Kelu L. Sullivan of Baker & Hostetler LLP, Washington D.C., USA. Respondent is RainSoft of Cincinnati (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rainsoftofcincinnati.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2014; the National Arbitration Forum received payment on March 20, 2014.
On March 20, 2014, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <rainsoftofcincinnati.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2014 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@rainsoftofcincinnati.com. Also on March 21, 2014, 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 April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant
a) Complainant manufactures and markets premium water treatment equipment and water quality solutions. Complainant has been in business since 1953.
b) Complainant has rights in the RAINSOFT mark, used in connection with premium water treatment equipment and water quality solutions. Complainant owns registrations for the RAINSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 715,436 registered May 16, 1961).
c) Respondent’s <rainsoftofcincinnati.com> domain name is confusingly similar to Complainant’s RAINSOFT mark. The disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “of,” the geographic indicator “Cincinnati,” and the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <rainsoftofcincinnati.com> domain name.
a. Respondent used to be a distributor of Complainant’s products, but Complainant has since terminated the agreement with Complainant. See Complainant’s Exhibit 5. Respondent is no longer authorized to use Complainant’s RAINSOFT mark in any way.
b. Respondent is using the <rainsoftofcincinnati.com> domain name to redirect Internet users to Complainant’s new competing business, Olympic Water Treatment. See Complainant’s Exhibit 6.
e) Respondent registered and is using the <rainsoftofcincinnati.com> domain name in bad faith.
a. Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s RAINSOFT mark. Respondent is using the disputed domain name to redirect Internet users to Respondent’s competing business, Olympic Water Treatment. See Complainant’s Exhibit 6.
b. Respondent had knowledge of Complainant’s mark prior to registering the <rainsoftofcincinnati.com> domain name because Respondent used to be a distributor of Complainant’s products.
Respondent
a) Respondent did not submit a timely response in this proceeding. An email, essentially conceding the case, was sent by Respondent to the National Arbitration Forum on April 16, 2014.
1. Respondent’s <rainsoftofcincinnati.com> domain name is confusingly similar to Complainant’s RAINSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <rainsoftofcincinnati.com> domain name.
3. Respondent registered or used the <rainsoftofcincinnati.com> 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.
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 contends it has rights in the RAINSOFT mark, used in connection with premium water treatment equipment and water quality solutions. Complainant states it owns registrations for the RAINSOFT mark with the USPTO (e.g., Reg. No. 715,436 registered May 16, 1961). Panels have continuously found that providing evidence of a registration for a given mark is a strong indication that a complainant has rights in that mark. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i)”). The Panel concludes that complainant has rights in the RAINSOFT mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <rainsoftofcincinnati.com> domain name is confusingly similar to Complainant’s RAINSOFT mark. Complainant alleges that the disputed domain name incorporates Complainant’s mark in its entirety while adding the generic term “of,” the geographic indicator “Cincinnati,” and the gTLD “.com.” Prior panels have frequently found that a disputed domain name is confusingly similar to a registered mark where it adds a generic term or a geographic indicator. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Additionally, previous panels have routinely found that the addition of a gTLD does not differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). The Panel concludes that Respondent’s <rainsoftofcincinnati.com> domain name is confusingly similar to Complainant’s RAINSOFT mark 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 (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 contends that Respondent does not have any rights or legitimate interests in the <rainsoftofcincinnati.com> domain name. Complainant asserts that Respondent used to be a distributor of Complainant’s products, but Complainant has since terminated the agreement with Complainant. See Complainant’s Exhibit 5. Respondent is no longer authorized to use Complainant’s RAINSOFT mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “RainSoft of Cincinnati” as the domain name registrant. Although it appears that Respondent is commonly known by the disputed domain name based on the WHOIS record, past panels have rejected this notion where there is a lack of affirmative evidence that Respondent was commonly known as the disputed domain name prior to registering it. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant). Here the Panel acknowledges that Complainant dissolved its agreement with Respondent and claims no further rights exists as between Respondent and the RAINSOFT mark. The Panel determines there is a lack of evidence to support a claim that Respondent is commonly known by the <rainsoftofcincinnati.com> domain name, and finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts Respondent is using the <rainsoftofcincinnati.com> domain name to redirect Internet users to Complainant’s competing business, Olympic Water Treatment. See Complainant’s Exhibit 6. Past panels have found that using a confusingly similar domain name to operate a business that competes with a complainant does not demonstrate a bona fide offering of goods and services, or a legitimate noncommercial or fair use. See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i).
Complainant contends Respondent registered and is using the <rainsoftofcincinnati.com> domain name in bad faith. Complainant asserts that Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s RAINSOFT mark. Complainant states that Respondent is using the disputed domain name to redirect Internet users to Respondent’s competing business, Olympic Water Treatment. See Complainant’s Exhibit 6. Past panels have found that using a confusingly similar domain name to operate a business that competes with a complainant constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Therefore, the Panel finds that Respondent registered and is using the <rainsoftofcincinnati.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to further his competing business interests.
Complainant alleges that Respondent had knowledge of Complainant’s mark prior to registering the <rainsoftofcincinnati.com> domain name because Respondent used to be a distributor of Complainant’s products. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name, and the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rainsoftofcincinnati.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panalist
Dated: April 23, 2014
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