Jandy Industries, Inc. v.
Jeff Yurtin and WWW Development Inc.
Claim Number: FA0810001230025
PARTIES
Complainant is Jandy Industries, Inc. (“Complainant”), represented by Katherine
Andres,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jandypoolproducts.com> and <jandypoolsupplies.com>,
registered with Enom, Inc.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 17, 2008; the
National Arbitration Forum received a hard copy of the Complaint on October 20, 2008.
On October 20, 2008, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <jandypoolproducts.com> and <jandypoolsupplies.com>
domain names are registered with Enom, Inc.
and that the Respondent is the current registrant of the names. Enom, Inc.
has verified that Respondent is bound by the Enom,
Inc. 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 October 29, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 18, 2008 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@jandypoolproducts.com,
postmaster@jandypoolsupplies.com by e-mail.
Respondent’s Response was received
in electronic form on November
19, 2008, after the Response deadline had passed; and no hard copy was received
prior to the Response deadline. (In subsequent correspondence Respondent maintained that the
Response was submitted on November 18, 2008.) Thus the National Arbitration Forum does not
consider the Response to be in compliance with ICANN Rule 5. In the deficient Response, the Respondent addressed
various aspects of the Complaint, and requested an extension of time “to
provide a better response prepared by an attorney familiar with ICAAN [sic]
rules and regulations.” However, the
Respondent did not submit a formal extension request pursuant to Paragraph 6(a)
of the Forum’s Supplemental Rules, which requires inter alia that any such request be submitted before the deadline
for submission of the Response, that it state the length of the requested
extension, and that it be accompanied by payment of an extension fee. In light of the Panel’s disposition of this
case, the Panel finds it unnecessary to refer to the deficient Response or to
permit the Respondent a further opportunity to submit material for the Panel’s
consideration.
On November 22, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of JANDY, a registered trademark for swimming
pool cleaning equipment which it has used in commerce since 1961. Complainant alleges that the disputed domain
names are confusingly similar and identical to its trademark; that Respondent
is using the domain names to market pool products and accessories covered under
its trademark registration. Complainant
further alleges that the web page at <jandypoolproducts.com>
bears the caption “JandyPoolProducts.com for Swimming Pools Etc.,” and
therefore is likely to create initial interest confusion among consumers and to
give the impression that Respondent is affiliated with Complainant.
Complainant contends that Respondent lacks rights or legitimate
interests in the domain name <jandypoolproducts.com>
because it incorporates Complainant’s mark and contains the name of
Complainant’s parent company, Jandy, Inc., formerly known as Jandy Pool
Products, Inc. Complainant asserts that
Respondent and Respondent’s business are not known by the domain names and
their names do not contain “Jandy.”
Complainant states that it has not granted Respondent the right to use its
mark.
Finally, Complainant contends that Respondent is using the disputed
domain names in bad faith, for the purpose of disrupting and diverting
Complainant’s business and intentionally creating a likelihood of confusion as
to the source, sponsorship, affiliation, or endorsement of Respondent’s website
and products offered for sale on the site.
Complainant asserts that customers seeking Complainant’s website may be
confused into using Respondent’s website, believing that they are in fact
purchasing directly from Complainant or another company endorsed or authorized
by Complainant.
B. Respondent
For the reasons set forth above, the Panel has not considered the
deficient Response.
FINDINGS
The Panel finds that the disputed domain
names are confusingly similar to a mark in which Complainant has rights. The Panel further finds that Complainant has
failed to prove that Respondent lacks rights or legitimate interests in respect
of the disputed domain names, and that Complainant has failed to prove that
Respondent registered and is using the disputed domain names in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The disputed domain names combine
Complainant’s registered trademark with terms that describe the merchandise
covered by the mark. The domain names
are therefore confusingly similar to the mark.
Based upon the allegations in the Complaint
and the limited supporting evidence provided by Complainant, it appears to the
Panel that Respondent is a retailer of swimming pool products, doing business
as “Swimming Pools Etc.;” and that the website to which the disputed domain
name <jandypoolproducts.com>
resolves is being used by Respondent for the purpose of marketing Jandy
products. There is no indication or
allegation that such products are anything but genuine Jandy products. It is not clear whether Respondent is an
authorized dealer or merely an independent reseller of Jandy products. At the top of the website is the statement
“JandyPoolProducts.com from Swimming Pools Etc” and, in somewhat smaller type,
“Looking for Jandy’s website click here.”
A reseller or authorized dealer of
trademarked merchandise may legitimately use a domain name incorporating the
trademark if (1) the reseller is actually offering the merchandise for sale;
(2) the reseller uses the domain name for a website that promotes only the
trademarked merchandise; (3) the website accurately discloses the reseller’s
relationship with the trademark owner; and (4) the reseller does not try to
corner the market in domain names incorporating the trademark. ITT Mfg.
Enters., Inc. v. Nicoll, D2008-0936 (WIPO Nov. 7, 2008). In this case it appears that Respondent’s use
of <jandypoolproducts.com>
meets all of these requirements, and thus that Respondent likely has rights or
legitimate interests in respect of that domain name. The Panel therefore concludes that
Complainant has failed to meet its burden of proving that Respondent lacks
rights or legitimate interests in <jandypoolproducts.com>
for purposes of Paragraph 4(a)(ii) of the Policy.
The Complaint does not contain any
allegations relating to Respondent’s use of the other disputed domain name, <jandypoolsupplies.com>. For this reason, and in light of the above
analysis, the Panel reaches the same conclusion with regard to this domain
name.
Based upon the evidence before the Panel, it
appears that Respondent registered and used the disputed domain names for the
purpose of marketing genuine trademarked goods (albeit, perhaps, without specific
authorization from Complainant). As
discussed above, that use is likely legitimate.
Even if it is otherwise, in this Panel’s view it does not rise to the
level of bad faith. At most this case
involves a legitimate trademark dispute rather than a clear instance of
cybersquatting, and it therefore is not susceptible to adjudication under the
Policy. See Second Staff Report on
Implementation Documents for the Uniform Domain Dispute Resolution Policy, (Oct.
24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>,
at ¶ 4.1(c). The Panel therefore
concludes that Complainant has not sustained its burden of proving that the
disputed domain names were registered and being used in bad faith.
DECISION
Having considered all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: December 9, 2008
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