DECISION

 

Hayward Industries, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf

Claim Number: FA2312002077167

 

PARTIES

Complainant is Hayward Industries, Inc. ("Complainant"), represented by Erik Paul Belt of McCarter English, LLP, Massachusetts, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <haywardpool.us.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.

 

Complainant submitted a Complaint to Forum electronically on December 29, 2023; Forum received payment on December 29, 2023.

 

On January 2, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <haywardpool.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy ("the Policy").

 

On January 3, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2024, 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 the attention of postmaster@haywardpool.us.com. Also on January 3, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 24, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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 attendant to the Policy ("the Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant is a marketer of equipment for swimming pools, spas, hot tubs, whirlpools, and other recreational bodies of water, and is one of the largest manufacturers and sellers of residential and commercial pool equipment in the world.

 

Complainant holds a registration for the trademark HAYWARD, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 3,969,301, registered May 31, 2011, renewed as of March 10, 2022.

 

Complainant does business online at the domain names <hayward.com> and <hayward-pool.com>.

 

Respondent registered the domain name <haywardpool.us.com> on November 17, 2022.

 

The domain name is confusingly similar to Complainant's HAYWARD mark and to Complainant's official domain names.

 

The <haywardpool.us.com> domain name redirects to the domain name <haywardpoolproducts.store> which, in turn, resolves to an English language website that appears to be a website of Complainant, in that it features Complainant's HAYWARD mark and images of its products.

 

Respondent has no connection to or relationship with Complainant.

 

Complainant has not licensed or otherwise authorized Respondent to use any of Complainant's marks or marketing images.

 

Respondent has no trademark rights in the domain name.

 

Respondent has not been commonly known by the domain name.

Respondent's resolving website also carries links to the official website of Amazon.com, which itself resolves to webpages offering for sale the products of both Complainant and its commercial competitors.

 

The same website recites that Respondent is a participant in the Amazon Services LLC Associates Program, which is "an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to Amazon.com."

 

Respondent operates the website resolving from its domain name to pass itself off as Complainant online in order to profit financially.

 

Respondent has neither any rights to nor any legitimate interests in the domain name.

 

Respondent knew of Complainant and its rights in the HAYWARD mark when it registered the <haywardpool.us.com> domain name.

 

Respondent's use of the domain name disrupts Complainant's business.

 

Respondent both registered and now uses the domain name in bad faith.

 

Complainant has participated in a CentralNic Mediation involving the domain name, as required by the CentralNic Dispute Resolution Policy, and that Mediation has been terminated.   

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)       the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)       Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)       the same domain name was registered or is being used by Respondent in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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:

 

i.                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.                      Respondent has no rights to or legitimate interests in respect of the domain name; and

iii.                      the domain name has been registered or is being used by Respondent in bad faith.

 

In view of the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the Policy governing this proceeding, the Panel will draw upon UDRP precedent, as appropriate, in rendering its decision in this proceeding.

 

In view of Respondent's failure to submit a response to the allegations of Complainant's Complaint, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this administrative proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate.  The Panel is entitled to accept all reasonable allegations set out in the Complaint.  However, the Panel may deny relief where a complaint contains merely conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3.  See also eGalaxy Multimedia Inc. v. ON HOLD By Owner, 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".

 

Identical and/or Confusingly Similar

By reason of its registration of the HAYWARD trademark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding.  See, for example, Liberty Global Logistics, LLC v. damilola Emmanuel, et al., FA 1738536 (Forum Aug. 4, 2017):

 

Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.

 

This is true without regard to whether Complainant's rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Iceland). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010):

[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.

 

Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <haywardpool.us.com> domain name is confusingly similar to Complainant's HAYWARD mark. The domain name incorporates the mark in its entirety, with only the addition of the generic term "pool," which relates directly to Complainant's line of business, plus the suffix ".us," which reproduces the country code Top Level Domain ("ccTLD") for the United States, where Complainant is headquartered, and the generic Top Level Domain ("gTLD") ".com."  These alterations of the mark, made in creating the domain name, do not enable it to escape the realm of confusing similarity under the standards of the Policy.  See, for example, See Williams-Sonoma, Inc. v. Redacted for Privacy, FA2067774 (Forum Nov. 22, 2023):

 

[T]he gTLD, '.com', can be disregarded, as can the element, '.us', which reproduces the ccTLD for the United States.

   

See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):

  

[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

This is because every domain name requires a gTLD or other TLD.

 

Further see Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the generic term "finance," which described that complainant's financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).

  

Rights or Legitimate Interests

Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <haywardpool.us.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must present a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):

 

Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.

 

Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.

 

We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <haywardpool.us.com>, and that Complainant has not licensed or otherwise authorized Respondent to use the HAYWARD mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf," which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).

                                                            

We next observe that Complainant asserts, without objection from Respondent, that the <haywardpool.us.com> domain name redirects to the domain name <haywardpoolproducts.store>, which, in turn, resolves to an English language website that appears to be a legitimate website offered or authorized by Complainant, in that it features Complainant's HAYWARD mark and images of certain of its products. Complainant further asserts, again without objection from Respondent, that Respondent's resolving website also carries links to the official website of Amazon.com, which itself resolves to webpages offering for sale the products of both Complainant and its commercial competitors, and that the same website recites that Respondent is a participant in the Amazon Services LLC Associates Program, which is "an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to Amazon.com," and, finally, that Respondent operates the website resolving from its domain name to pass itself off as Complainant online in order to acquire financial gain.

 

This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.  See, for example,

SIMPLISAFE, INC. v. Redacted for Privacy, FA2043857 (Forum June 12, 2023) (finding that a website that was passed off as a UDRP Complainant's website, but "operated as a mechanism to encourage visitors to click on hyperlinks (for which the Respondent was likely to receive revenue) allowing users to purchase both the Complainant's products and competing products through third party retailers (the Amazon Affiliate program) . . . is not a bona fide offering [of goods or services] or a legitimate noncommercial or fair use [of the challenged domain name]").

                                                           

The Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).

 

Registration or Use in Bad Faith

We have already concluded that Respondent's <haywardpool.us.com> domain name is confusingly similar to Complainant's HAYWARD mark. In light of this, and of the evidence presented with the Complaint, we further conclude that Respondent's use of the domain name in the manner alleged in the Complaint is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant's affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent's bad faith in both registering and using the domain name. See, for example, O'Reilly Automotive, Inc. v. Zhang XianHong, FA2024955 (Forum Feb. 2, 2023):  "Passing off as a Complainant [mark holder] is evidence of bad faith [registration and use of a confusingly similar domain name] per Policy ¶ 4(b)(iv)." 

 

The panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the CDRP Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <haywardpool.us.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated: February 7, 2024