Orlando Bathing Suit LLC v Rex Glenn

national arbitration forum

DECISION

Orlando Bathing Suit LLC v. Rex Glenn

Claim Number: FA1203001434935

PARTIES

Complainant is Orlando Bathing Suit LLC (“Complainant”), represented by Jennifer D. Silverman of Ellenoff Grossman & Schole, New York, USA. Respondent is Rex Glenn (“Respondent”), Philippines.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <everythingbutwater.org>, registered with 1&1 Internet AG.

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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2012; the National Arbitration Forum received payment on March 16, 2012.

On March 20, 2012, 1&1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <everythingbutwater.org> domain name is registered with 1&1 Internet AG and that Respondent is the current registrant of the name. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2012 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@everythingbutwater.org. Also on March 21, 2012, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

Complainant is in the business of selling swimwear, clothing, and related accessories.
Complainant owns a trademark registration for its EVERYTHING BUT WATER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,044,341 registered October 25, 2011).
Complainant uses the EVERYTHING BUT WATER mark in connection with on-line retail store services featuring swimwear, clothing, sunglasses, and related accessories.
Respondent’s disputed domain name is identical to Complainant’s EVERYTHING BUT WATER mark.
Respondent does not have a legitimate right or interest in the disputed domain name and does not make a legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name resolves to a website that attracts consumers for commercial gain.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a registered trademark for the EVERYTHING BUT WATER mark with the United States Patent and Trademark Office. Respondent did not submit a Response in this proceeding.

DISCUSSION

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.”).

Identical and/or Confusingly Similar

Complainant has provided the Panel with copies of its USPTO trademark registration certificates for its EVERYTHING BUT WATER mark (e.g., Reg. No. 4,044,341 registered October 25, 2011). The Panel finds that Complainant’s USPTO trademark registrations are evidence that Complainant holds rights in its EVERYTHING BUT WATER mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel also finds that Complainant’s trademark registrations suffice to prove it owns rights in the mark under Policy ¶ 4(a)(i) even though the mark is not registered in the country where Respondent is located. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

Complainant contends that Respondent’s <everythingbutwater.org> is identical to Complainant’s EVERYTHING BUT WATER mark. Complainant alleges that the disputed domain name adds a generic top-level domain (“gTLD”) and is comprised of Complainant’s entire mark, omitting the spaces between the words. The Panel finds that adding a gTLD and omitting the spaces between the words is not enough to distinguish the disputed domain name from Complainant’s mark; thus the disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

After examining the evidence submitted by Complainant, the Panel finds that the WHOIS information identifies “Rex Glenn” as the registrant of the <everythingbutwater.net> domain name. The Panel also notes that Respondent did not provide any evidence that it is commonly known by the disputed domain name because Respondent did not respond to the case. A respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel therefore concludes that Respondent is not commonly known by the <everythingbutwater.net> domain name according to Policy ¶ 4(c)(ii).

Complainant argues that Respondent is not using the <everythingbutwater.net> domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <everythingbutwater.net> resolves to a website that causes confusion with, and diverts Internet traffic from, Complainant’s website by inducing web users to click on links throughout the resolving website, which re-directs users to pages on a third-party site where women’s swimwear is sold. The sale of goods and services similar to those offered by Complainant is evidence that Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the disputed domain name. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”). After examining the evidence submitted by Complainant, the Panel finds that Respondent’s use of the disputed domain name to sell competing goods is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <everythingbutwater.net> domain name.

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant contends that Respondent is commercially benefitting from Internet users’ confusion as to Complainant’s affiliation with the disputed domain name. Complainant argues that Respondent creates a likelihood of confusion with Complainant’s EVERYTHING BUT WATER mark by confusingly and repeatedly using the mark and enabling site visitors to purchase swimwear. Complainant also argues that Respondent uses the disputed domain name to mislead web users to Respondent’s website and redirects them to third-party sites for commercial gain. Using Complainant’s mark to attract Internet uses to a competing website for Respondent’s own profit is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Because the finds that Respondent is commercially benefitting from such attraction, the Panel determines that Respondent’s registration and use of <everythingbutwater.net> domain name was in bad faith under Policy ¶ 4(b)(iv).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

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 <everythingbutwater.org> domain name be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panelist

Dated: April 30, 2012