DECISION

 

Hayward Industries, Inc. v. Loren JMcDaniels

Claim Number: FA2412002128024

PARTIES

Complainant is Hayward Industries, Inc. ("Complainant"), represented by Lori J. Shyavitz of McCarter & English, LLP, Massachusetts, USA. Respondent is Loren JMcDaniels ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <haywardfr.com>, registered with MAT BAO CORPORATION.

 

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.

 

The Honorable Neil Anthony Brown KC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 4, 2024; Forum received payment on December 4, 2024.

 

On December 8, 2024, MAT BAO CORPORATION confirmed by e-mail to Forum that the <haywardfr.com> domain name is registered with MAT BAO CORPORATION and that Respondent is the current registrant of the name. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION 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 December 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2025 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@haywardfr.com. Also on December 12, 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 3, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

There is no real question but that the proceeding should be conducted in the English language. It appears that there is an English version of the registration agreement and also a Vietnamese version. The Complainant points out that the Registrar has stated that the registration agreement is in English and the Panel has confirmed this by examining the Verification Response where the Registrar has answered "English" to the request for "(t)he language of the Registration Agreement for (the)… domain name ...". The Panel takes this to mean that the registration agreement for the domain name that is the subject of this proceeding is the English language version of the Registrar's registration agreement. Thus, the proceeding should be conducted in the English language, consistent with Rule 11 (a). However, from an abundance of caution, the Panel adds that even if it were required to determine the more appropriate language as between English and Vietnamese, it would determine that the more appropriate language is English. This is for the reasons given by the Complainant, namely that the Respondent resides in the United States, the Complainant is a United States company, the relevant trademark is in English, the domain name is in English, the resolving website contains English words that also appear on the Complainant's genuine English language website, the Terms and Conditions for purported sales from the Respondent's website provide that all contracts are to be conducted in English and the governing law is the law of Scotland, and that the Respondent itself has asserted on its website that it has "multiple warehouses across the United States." 

 

Thus, English is by far the more appropriate language in which to conduct the proceeding. 

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

    Complainant made the following contentions.

1.       The Complainant is a United States company engaged in the provision of equipment for swimming pools and related goods and services and has been so engaged for almost 100 years.

2.       The Complainant provides its goods and services under the trademark for HAYWARD. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the HAYWARD trademark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration number 1058211, registered on February 8, 1977 and other trademarks for HAYWARD and derivatives (collectively "the HAYWARD trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The HAYWARD trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.

4.        As well as its trademark, Complainant has registered the domain names <hayward.com>, <hayward.fr> and other domain names  that it uses in its business and in particular for its website at www.hayward.com where it markets its products under the HAYWARD trademark and brand.

5.       The Respondent registered the <haywardfr.com> domain name on December 18, 2023 ("the disputed domain name").

6.       The disputed domain name embodies, without the consent of the Complainant, the HAYWARD trademark with the addition of the letters "fr" and the generic Top Level Domain ".com".

7.       The disputed domain name is confusingly similar to the HAYWARD trademark.

8.       The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:

(a)       the Respondent has caused the domain name to resolve to a website that offers counterfeit or illegally obtained products for sale that the Respondent pretends are genuine and authentic HAWYWARD products when they are not and with the intention of misleading and deceiving potential buyers;

(b)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii);

(c)       the Respondent has no trademark or intellectual property rights in the disputed domain name;

(d)       the Complainant has never given any licence, permission or authority to the Respondent to use the HAYWARD trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent;

(e)       the Respondent is impersonating and passing itself off as the Complainant;

(f)       the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i);

(g)       the Respondent has not used the domain names for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain;

(h)       the Respondent has used the domain name to deceive consumers into believing that the products purported to be offered for sale on the Respondent's website are genuine and authentic by attempting to create the impression that the website is affiliated with the Complainant when it is not;

(i)       the Respondent's conduct has not only attempted to cause confusion in the mind of consumers but has generated actual confusion; and

(j)       there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

9.       The Respondent has registered and used the disputed domain name in bad faith. That is so because:

(a)                       the Respondent had actual knowledge of the Complainant and its trademark when it registered the disputed domain name;

(b)                       the Respondent has used the domain name to purport to sell products that directly compete with authentic HAYWARD products;

(c)                       the Respondent's aforesaid conduct constitutes impersonation and passing off by the Respondent of the Complainant with the intention that it would enable the Respondent to sell competing and unauthorized equipment;

(d)                       the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv);

(e)                       the Respondent's aforesaid conduct has disrupted the Complainant's business within the meaning of Policy ¶ 4(b)(iii); and

(f)                      all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith

B. Respondent

    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.       The Complainant is a United States company engaged in the provision of equipment for swimming pools and related goods and services and has been so engaged for almost 100 years.

2.       The Complainant provides its goods and services under the trademark for HAYWARD. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the HAYWARD trademark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration number 1058211, registered on February 8,1977 and other trademarks for HAYWARD and derivatives (collectively "the HAYWARD trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

3.       The Respondent registered the <haywardfr.com> domain name on December 18, 2023 ("the disputed domain name").

4.       The disputed domain name embodies, without the consent of the Complainant, the HAYWARD trademark with the addition of the letters "fr" and the generic Top Level Domain ".com".

5.       The Respondent has caused the domain name to resolve to a website and by that means has impersonated and passed itself off as the Complainant, misled internet users, utilized and infringed the Complainant's trademark, generated confusion and offered  counterfeit and/or illegal products in competition with the authentic products of the Complainant.

6.       By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the HAYWARD trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith.

7.       Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant.

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:

 

(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").

 

Identical and/or Confusingly Similar

The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence has shown that the Complainant provides its goods and services under the trademark for HAYWARD and that it has done so for many years. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the HAYWARD trademark by virtue of its registration of that mark with the United States Patent and Trademark Office, registration number 1058211, registered on February 8,1977 and other trademarks for HAYWARD and derivatives registered both nationally and internationally including in France (collectively "the HAYWARD trademark"). The Complainant has used that trademark since its registration to offer its goods and services.  

The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order.

The Complainant has thus established its trademark rights and hence its standing to bring this proceeding.

The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's HAYWARD trademark.

The Panel finds that the disputed domain name is confusingly similar to the HAYWARD trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the HAYWARD trademark with the addition of the letters "fr" standing for France and the generic Top Level Domain ".com". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the trademark and as dealing with the Complainant's goods and services offered under the trademark and as being either a domain name of the Complainant itself or one that has been registered with its consent. The addition of the letters "fr" has the result that the domain name would be interpreted by internet users as signifying the goods and services of the Complainant offered in France. That is because the addition of a generic word or abbreviation such as "fr" for France will not negate a finding of confusing similarity that is otherwise present on the evidence, which in the present case it is.

The addition of the generic Top Level Domain ".com" is ignored in making the comparison, because all domain names must have such an extension.

Thus, internet users would read the domain name as invoking the  HAYWARD trademark, as dealing with the Complainant's well-known goods and services offered under the trademark in France and as being a domain name of the Complainant itself or a domain name that has been registered with its consent. 

The Panel therefore finds that the disputed domain name is confusingly similar to the HAYWARD trademark under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish under the Policy.

 

Rights or Legitimate Interests

It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such 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)).

 

The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. Several of these considerations overlap, but the substance of them in combination is as follows. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant:

(a)       the first and most significant of them is that the Respondent took the Complainant's trademark without any permission and used it as the central feature of the domain name that it then registered; not only had the trademark been owned and used by the Complainant for many years, but the domain name was similar to the trademark and confusingly so; that confusion was emphasised and intentional because it was also virtually identical to the Complainant's own domain name <hayward.fr>, the only difference being that the Respondent's domain name deleted the period between "hayward" and "fr"; the disputed domain name was thus in substance a copy of the Complainant's trademark and clearly effected for an improper purpose; thus, there is no way in which that creation could give rise to a right  or legitimate interest in the domain name used to implement the Respondent's improper purpose;

(b)       secondly, the Respondent then caused the domain name to resolve to a website that is amply demonstrated by the Complainant's Annex 9 which shows a screenshot of 18 pages that uses the HAYWARD name and brand dozens of times, with the clear intention of giving the impression that the swimming pool products offered on the site are HAYWARD products; the evidence is that those products are not genuine HAYWARD products and are therefore either counterfeit or they have been illegally acquired and are now being illegally offered for sale; that conclusion is emphasized by the fact that the products are heavily discounted, a regular feature of counterfeit or illegal goods; the HAYWARD trademark is also used as the masthead of the website; the products are illustrated by images of the Complainant's genuine products; the Complainant has also usefully exhibited extracts from the Complainant's own website and contrasted them with corresponding extracts from the Respondent's offending website and it is clear from that material that the Respondent has plagiarised the Complainant's website and has used the Complainant's copyright images and promotional phraseology, even to the extent that it, the Respondent, claims to have copyright in the images; the similarities or in reality the identicality between the two websites is remarkable and can leave no doubt that the Respondent has engaged in a brazen exercise of using the Complainant's material and promoted it as its own; it is clear that such an array of misleading and deceptive material cannot possibly give rise to a right or legitimate interest in the very domain name used to perpetrate this subterfuge;

(c)       the Respondent's website also includes other blandishments that are hallmarks of deceptive websites; thus, they include links to purchase the products on display, requests for personal information, invitations to subscribe to newsletters, methods of payment and suggested credit cards to be used for purchases; these are obviously aspects of a phishing exercise; again, the material exhibited by the Complainant shows that it could not conceivably give rise to a right or legitimate interest for the Respondent in the domain name used to perpetrate such conduct;

(d)       not only does the aforementioned conduct show the potential for the deception and misleading of consumers, but the Complainant has given an concrete example, supported by hard evidence of a deception of a customer that was actually carried out;

(e)       the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is known by the domain name and no evidence that it is known by any name other than its own; so a right or legitimate interest cannot be shown by this criterion;

(f)       the evidence is that the Respondent has no trademark or intellectual property rights in the disputed domain name; thus, it could not obtain a right or legitimate interest in the domain name on that ground;

(g)       the evidence shows that the Complainant has never given any licence, permission or authority to the Respondent to use the HAYWARD trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent;

(h)       the Respondent is impersonating and passing itself off as the Complainant; clearly this has been established by the aforesaid evidence that shows that the Respondent has sought to show that it actually is the Complainant, a classic case of impersonation and passing off, made the worse because it is obviously a case where the wrong-doer has engaged in it to make money illegally;

(i)       the evidence shows that the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide in taking another party's trademark and using it for deception and to mislead consumers; the conduct established by the evidence could be more accurately described as mala fide;

(j)       the Respondent has not used the domain name for a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain; the conduct was illegitimate, commercial rather than noncommercial and it was not fair, either to the Complainant or to internet users in general;

(k)       the Respondent has used the domain name to deceive consumers into believing that the products purported to be offered for sale on the Respondent's website are genuine and authentic by attempting to create the impression that the website is affiliated with the Complainant when it is not; this has been established by the evidence;

(l)       the Respondent's conduct has not only attempted to cause confusion in the mind of consumers but has generated actual confusion as has already been shown by the actual case demonstrated by the Complainant's evidence; and

(m)       there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name.

The Complainant has therefore made out a very persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name.

 

All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it.

 

The Complainant has therefore made out the second of the three elements it must establish under the Policy.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular in the deception of potential buyers and internet users in which the Respondent has engaged, amply demonstrated by Annex 9, discussed above, Annex 9-a which covers the requirement to submit personal information, and Annex 10 which covers the specific case of deception of a potential buyer. In particular, it is clear from the evidence that, as the Complainant has submitted:

(a)                      the Respondent had actual knowledge of the Complainant and its trademark when it registered the disputed domain name; this has been amply shown by the extensive use by the Respondent of the Complainant's trademark, its blatant impersonation and passing off and the phishing expedition in which it is engaged; in any event, the Respondent could not have carried out its subterfuge without actual knowledge of the Complainant, its trademark and the goodwill attaching to its name; the Respondent undoubtedly had actual knowledge of its target;

(b)                       the Respondent has used the domain name to purport to sell products that directly compete with authentic HAYWARD products; this has already been shown by the evidence;

(c)                       the Respondent's aforesaid conduct constituted impersonation and passing off by the Respondent of the Complainant with the intention that it would enable the Respondent to sell competing and unauthorized equipment; this has already been established;

(d)                       the Respondent's aforesaid conduct has generated confusion between the Complainant's and the Respondent's websites within the meaning of Policy ¶ 4(b)(iv); this has already been established;

(e)                       the Respondent's aforesaid conduct has disrupted the Complainant's business within the meaning of Policy ¶ 4(b)(iii); it was pivotal to the Respondent's scheme that it was seeking to siphon off sales that the Complainant would otherwise make and effect sales that the Respondent, so it hoped, would be able to effect for itself; and

(f)                      all of the acts, facts, matters and circumstances shown by the evidence have established that the Respondent registered and used the disputed domain name in bad faith.

Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the HAYWARD trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting, impersonating and passing itself off as the Complainant, tried to set up an alleged rival source of products in the same field as the Complainant, pretended that it was the Complainant or authorised by it and actively set about misleading the public to make money.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has also correctly cited numerous prior UDRP decisions that support all of its contentions.

The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

The Honorable Neil Anthony Brown KC

Panelist

Dated: January 6, 2025