Florida Water Products, LLC v. evelyn juarez / N/A
Claim Number: FA2205001998544
Complainant is Florida Water Products, LLC (“Complainant”), represented by Stephanie Schmidt of Norton Rose Fulbright US LLP, Texas, USA. Respondent is evelyn juarez / N/A (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fwpppool.com>, registered with GMO Internet, Inc. d/b/a Onamae.com.
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 Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2022; the Forum received payment on May 31, 2022. The Complaint was submitted in English.
On May 31, 2022, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <fwpppool.com> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 June 2, 2022, the Forum served the Complaint and all Annexes, including a Japanese and English language Written Notice of the Complaint, setting a deadline of June 22, 2022 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@fwpppool.com. Also on June 2, 2022, the Japanese and English language 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 July 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings to be in the Japanese language. However, pursuant to UDRP Rule 11(a), the Panel may find that another language is a more appropriate language in which to conduct the proceeding.
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel’s discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings must take into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent has some proficient in the English language. The Panel also notes Respondent’s address is in Texas, not Japan. Further, Complainant is not conversant nor proficient in the Japanese language and it would require delay and unnecessary costs to Complainant translate the documents into Japanese.
Accordingly, the Panel finds that in all the circumstances it is more appropriate to conduct the proceeding in the English language.
A. Complainant
Complainant made the following contentions.
Complainant, Florida Water Products, LLC, is a wholesale distributor of pool and spa supplies. Complainant asserts common law rights in the FWP mark through its continuous use and advertising of the mark in relation with their services. Respondent’s <fwpppool.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the FWP mark in its entirety and adds the letter “p”, the term “pool”, and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <fwpppool.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent with any rights in the FWP mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves to an inactive webpage. Respondent also uses an email address incorporating the disputed domain name in conjunction with a phishing scheme.
Respondent registered and uses the <fwpppool.com> domain name in bad faith. The disputed domain name resolves to an inactive webpage. Further, Respondent registered the disputed domain name in order to participate in a phishing scheme. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the FWP mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a wholesale distributor of pool and spa supplies.
2. Complainant has established its common law trademark rights in the FWP mark and that it acquired those rights thirty years ago
3. Respondent registered the <fwpppool.com> domain name on November 24, 2021.
4. Respondent has caused the disputed domain name to resolve to an inactive webpage and Respondent also uses an email address incorporating the disputed domain name in conjunction with a phishing scheme.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has common law rights in the FWP mark. Previously, panels have agreed that a complainant does not need to have a registered trademark to have valid rights in the mark pursuant to Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Therefore, Complainant does not need to have proof of the registration of the FWP mark to have rights in the mark. But it must establish its common law trademark rights by evidence.
Complainant argues the FWP mark has acquired secondary meaning through its continuous use of the mark since 1988 and also advertising of the mark. Demonstration of common law rights in a mark requires a showing the trademark has acquired secondary meaning in the minds of consumers. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”) That has been shown by the evidence in the present case. Complainant contends that it conducts business under the FWP mark and has prominently used and promoted the FWP mark in advertising its business and the Panel accepts that evidence. Accordingly, the evidence shows that the mark has acquired a secondary meaning to the effect that it indicates that Complainant is the source of the goods and services identified by the use of the mark. See Compl. Ex. C and E. As the Panel agrees, the Panel finds that Complainant has established its common law rights in the FWP mark under Policy ¶ 4(a)(i) and that it acquired those rights more than 30 years ago.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FWP mark. Complainant argues Respondent’s <fwpppool.com> domain name is identical or confusingly similar to Complainant’s FWP mark as it incorporates the mark with additional letters and the word “pool. The addition of a gTLD and a descriptive term fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”). Additionally, merely adding letters to the mark further does not differentiate a mark from the domain name. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Here, the disputed domain name contains the FWP mark in its entirety while adding the word “pool”, the letter “p”, and the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s 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 name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s FWP mark and to use it in its entirety in the doimain name while adding the word “pool” and the letter“p” to the mark;
(b) Respondent registered the <fwpppool.com> domain name on November 24, 2021;
(c) Respondent has caused the disputed domain name to resolve to an inactive webpage and Respondent also uses an email address incorporating the disputed domain name in conjunction with a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <fwpppool.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the FWP mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS information for the disputed domain name lists the registrant as “evelyn juarez/ N/A”. See Registrar Email Verification. Complainant submits it has not licensed or otherwise authorized Respondent to use Complainant’s FWP mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f)Complainant also argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name instead resolves to an inactive webpage. Where the Respondent fails to make use of a domain, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides evidence of the disputed domain name resolving to an inactive webpage. See Compl. Ex. G. The Panel therefore finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii);
(g)Complainant submits that, because Respondent uses an email address incorporating the disputed domain name to solicit money and sensitive information from Complainant’s customer on false pretenses, Respondent has engaged in phishing and thus demonstrated its lack of rights or legitimate interest in Complainant’s mark. The impersonation of a complainant in conjunction with a phishing scheme may indicate a lack of rights or legitimate interest in a disputed domain name. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). In this case, Complainant provides screenshots of Respondent’s use of an email address incorporating the disputed domain name to solicit money from Complainant’s customer. See Compl. Ex. H. As the Panel agrees, it finds that Respondent lacks rights or legitimate interests in the disputed domain name, per Policy ¶ 4(a)(ii).
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 does not have a right or legitimate interest in the disputed domain name.
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 name was registered in bad faith and has 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 name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary submissions considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent had actual knowledge of Complainant's rights in the FWP mark. Complainant submits that the similarities between the disputed domain name and Complainant’s mark, as well as Respondent’s use of the domain name to engage in phishing, indicate that Respondent had actual knowledge of Complainant's mark and rights. 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 consequently Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). In this case, the Panel notes Complainant’s evidence that the FWP mark is associated with its services, and the Panel again notes the screenshots of Respondent’s use of the mark to pass itself off as Complainant via email. See Compl. Exs. C-E; see also Compl. Ex. H. Therefore, as the Panel finds Respondent had actual notice of Complainant’s rights in the mark, it finds Respondent acted in bad faith.
Thirdly, Complainant submits that Respondent used an email address incorporating the disputed domain name to solicit money from Complainant’s customers, engaging in phishing and thus demonstrating bad faith registration and use. Phishing may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)). See also SHUAA Capital psc v. Oba Junkie / shuaa capital psc, FA14009001581255 (Forum Oct. 29, 2014) (“The Panel finds that Respondent’s use of the domain name’s e-mail suffix for fraudulent purposes illustrates Policy ¶ 4(a)(iii) bad faith.”). Respondent’s use of fraudulent emails to solicit financial information from Complainant’s customers may be considered as phishing. See Compl. Ex. H. As the Panel agrees, the Panel finds Respondent’s registration and use of the disputed domain name to be in bad faith, pursuant to Policy ¶ 4(a)(iii).
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 <fwpppool.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: July 6, 2022
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