Western Heights Water Company v. Patrick Kelly / Patrick Q Kelly / Whois Protector westernheightswatercompany.org / WhoisProtector Inc.
Claim Number: FA1405001559657
Complainant is Western Heights Water Company (“Complainant”), represented by Steven J. Adamski, California, USA. Respondent is Patrick Kelly / Patrick Q Kelly / Whois Protector westernheightswatercompany.org / WhoisProtector Inc. (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <westernheightswatercompany.com> and <westernheightswatercompany.org>, registered with Domainpeople, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2014; the National Arbitration Forum received payment on May 15, 2014.
On May 20, 2014, Domainpeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names are registered with Domainpeople, Inc. and that Respondent is the current registrant of the names. Domainpeople, Inc. has verified that Respondent is bound by the Domainpeople, Inc. 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 May 27, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 2014 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@westernheightswatercompany.com, and postmaster@westernheightswatercompany.org. Also on May 27, 2014, 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.
A timely Response was received and determined to be complete on June 9, 2014.
Complainant filed a timely Additional Submission on June 16, 2014. Respondent filed a timely Additional Submission on June 17, 2014.
On June 20, 2104, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Anne M. Wallace,Q.C. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant has common law rights in the WESTERN HEIGHTS WATER COMPANY and WHWC service marks.
a. Complainant incorporated in February 1912, as the Yucaipa Water Company and in 1913, the company changed its name to Western Heights Water Company. Complainant’s company currently has 2,200 potable water services in and around the California cities of Yucaipa and Redlands. Complainant states that it has used the term WESTERN HEIGHTS WATER COMPANY to identify its services to both customers and non-customers for the last hundred years. Complainant provides evidence that it has used its mark exclusively and continuously on signage, stationary, public notices, customer literature, business cards, uniforms, and vehicles to distinguish the services provided by Complainant. Additionally, Complainant asserts that it has used the WHWC mark for the last ten years to promote and distinguish its business and water related services. Complainant has also used the WHWC mark in its signage, stationary, and the like.
2. Respondent’s <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names (the “Disputed Domain Names”) are confusingly similar to Complainant’s WESTERN HEIGHTS WATER COMPANY service mark.
a. Respondent’s Disputed Domain Names eliminate the space between the words and add the generic top-level domain (“gTLD”) “.com” or “.org.”
3. Respondent has no rights or legitimate interests in the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names.
a. Respondent is not commonly known by the Disputed Domain Names as the WHOIS information does not identify any Respondent as “Western Heights Water Company.”
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names. Respondent’s use of the Disputed Domain Names intends to gain an unfair economic advantage over Complainant, as well as mislead customers away from Complainant’s official website and tarnish Complainant’s name.
c. Respondent, Patrick Q. Kelly, learned of the WHWC marks in 2007, when he was approached by one of Complainant’s board members and asked to assist in reserving a domain name for potential future use. See Cotarelo Decl. ¶ 14. Complainant states that it is clear that in response to this request, Respondent decided to register the Disputed Domain Names himself with the intent to later demand that Complainant pay thousands of dollars.
d. Respondent previously used the Disputed Domain Names to resolve to a simple one-page website referencing Complainant.
e. After Complainant refused to pay Respondent’s asking price in exchange for the Disputed Domain Names, Respondent changed its resolving websites to what appears to be slavishly copied versions of Complainant’s official website. Complainant provides evidence that Respondent’s current resolving websites also feature an article that allegedly advocates using minority residents as sources of water. Additionally, the resolving website includes defamatory statements purportedly made by former members of Complainant’s board.
f. Respondent’s email alludes to the fact that Respondent is willing to sell the Disputed Domain Names for at least $10,000.
4. Respondent registered and is using the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names in bad faith.
a. Complainant contends that it is clear that Respondent registered the Disputed Domain Names with intent to sell them to Complainant for consideration far in excess of any out-of pocket expenses.
b. Respondent registered the Disputed Domain Names with the intent to disrupt Complainant’s business by misleading Internet users to a false website.
c. Respondent is taking advantage of the confusion caused by the Disputed Domain Names featuring Complainant’s mark, in order to attract Internet users to its website for commercial profit.
d. Respondent had actual knowledge of Complainant and Complainant’s marks when it registered the Disputed Domain Names.
1. Complainant has not registered any of its alleged service marks. Additionally, Complainant’s mark is made up of generic terms subject to substantial third-party use.
2. Respondent purchased the Disputed Domain Names in 2007 as a free service to the shareholders of Complainant. Complainant failed to contact Respondent for well over six years, regarding the Disputed Domain Names. Respondent contends that Complainant’s official website is focused on the financial aspects of Complainant’s services, while Respondent uses the Disputed Domain Names focus on the service area regarding water conservation, testing results of the EPA and accountability of the board members to the shareholders. Respondent intends to increase the transparency of the actions of the elected officials of Complainant’s business.
3. Respondent is not diverting Internet users away from Complainant, nor is it competing with Complainant because Complainant’s services are worthless outside of their service area, and those who reside within Complainant’s service area are required to use Complainant’s services.
4. Complainant fraudulently attempted to gain control of the Disputed Domain Names by contacting the registrar and portraying themselves as Respondent. When that failed, Complainant asked Respondent what a fair price would be for the domain names.
5. Respondent asserts that it is impossible to use the Disputed Domain Names to disrupt Complainant’s business, because there are no competitors to Complainant’s business due to the logistics of the nature of the business.
6. Respondent does not display referrals or links that redirect Internet users to any Internet locations or websites.
7. Complainant has engaged in reverse domain-name hijacking.
1. Respondent has not produced evidence contrary to Complainant’s claim that Respondent’s <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names are identical to Complainant’s WESTERN HEIGHTS WATER COMPANY mark and confusingly similar to Complainant’s mark.
2. The State of California has recently registered as service marks both the WESTERN HEIGHTS WATER COMPANY mark and the WHWC design mark.
3. The fact Complainant may not have actual competitors is irrelevant to whether a Complainant has existing rights related to a domain name. In fact, Complainant does have competitors as residents can purchase bottled water and they can also install residential wells on their property for individual domestic use. Respondent even displays adds for “National Well Surveying,” “Water Field Analysis,” “Water Softener,” “Backflow Services,” “Your Water is Making You Sick,” “Water tanks and water pumps,” and “quench” water coolers, on its resolving website.
4. Regardless of Respondent’s attempt to provide information on the resolving website, no respondent would be entitled to use the Complainant’s mark as its full domain name.
5. Respondent’s claim that it had no intention of selling the Disputed Domain Names to Complainant and received an “unsolicited request” relating to their sales price is spurious. Complainant contends that Respondent provided as “options” to Complainant’s “envisioned problem” that the Disputed Domain Names could be bought by Complainant or auctioned off. When Complainant inquired about an appropriate purchase price Respondent stated that the Disputed Domain Names have “been building their value for over 6 years,” and cited an article that $10,000 for a domain name “is still cheap.”
6. Respondent’s claim that there was domain name hijacking is false. Officials acting on behalf of Complainant acted in good faith in inquiring how these domain names could be transferred.
1. Complainant’s suggestion of supplying the residence solely on bottled water or drilling a private well in a residential area as realistic business competition is ridiculous. The only confusion a resident or customer may have is if they reside in the service area or not.
2. Respondent has no control over the content of the ads on the resolving website.
3. Respondent has a legitimate interest in the Disputed Domain Names. After a six year period, Complainant began providing the same information that Respondent had been doing. Respondent then provided additional information about the watershed area, EPA testing results, and more extensive information about water conservation. Respondent also has a part time residence in Southern California, and is passionate about water conservation.
4. Respondent claims that the information added about the elected board members was originally posted three to six months prior, by patients on a third party “review your doctor” website.
5. Respondent has never sold a domain name, and merely uses them as a “live sandbox” to test Joomla plugins and template layouts.
6. There was never any for sale advertisement for the Disputed Domain Names. Only after persistent harassment and an attempt by Respondent to inform the Complainant of market conditions of domain names, was there a request for purchase as a requirement for additional correspondence by the Respondent.
7. Benjamin Kelly never acted on behalf of Complainant, never represented to Respondent that he was acting on behalf of the Complainant, and further, Complainant has offered no proof to substantiate their repeated false claim relating to the forms of receipts of service, fees paid, or domain name registration confirmation.
8. Complainant registration of the <westernheightswater.org> domain name for their official website is proof that there was no intention of using the complete service mark in a domain.
9. Complainant’s registration of the service mark on May 20, 2014, five days after filing the original complaint, on May 15, 2014, is proof of an attempt to reverse domain-name hijack.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the Disputed Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
An examination of the material before the Panel discloses the “WhoisProtector” is listed as the registrant, administrator, and technical administrator of both Disputed Domain Names. Complainant believes, however, that “WhoisProtector” is merely a privacy services provided by a “partner” of the registrar “DomainPeople” which replaces the actual domain name owner’s registration information with its own information. While “WhoisProtector” is the technical registrant, Patrick Kelly’s email address is identified as the registrant, administrative and technical e-mail for both Disputed Domain Names. According to the WHOIS directory, “Patrick Kelly” is the “Admin Name” and “Patrick Q Kelly” is the “Admin Organization” for both Disputed Domain Names. On the material before us, the Panel is satisfied the Disputed Domain Names have been registered by the same domain name holder.
1. Complainant has rights in the WESTERN HEIGHTS WATER COMPANY mark. The Disputed Domain Names are confusingly similar to Complainant’s mark.
2. Respondent has no rights or legitimate interests in the Disputed Domain Names.
3. Respondent has registered and is using the Disputed Domain Names in bad faith.
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.
Complainant has provided evidence that:
· It has common law rights in the WESTERN HEIGHTS WATER COMPANY and WHWC service marks that predate Respondent’s registration on the Disputed Domain Names.
· Complainant incorporated in February 1912, as the Yucaipa Water Company and in 1913 changed its name to Western Heights Water Company.
· Complainant currently has 2,200 potable water services in and around the California cities of Yucaipa and Redlands.
· Complainant has used the term WESTERN HEIGHTS WATER COMPANY to identify its services to both customers and non-customers for the last hundred years.
· Complainant has used its mark exclusively and continuously on signage, stationary, public notices, customer literature, business cards, uniforms, and vehicles to distinguish the services provided by Complainant.
· Complainant has used the WHWC mark for the last ten years to promote and distinguish its business and water related services. It has also used the WHWC mark in its signage, stationary, and the like.
The Panel is satisfied Complainant has established rights in WESTERN HEIGHTS WATER COMPANY marks. Even if the words used in the mark could be considered to be generic even when combined as they are, the Panel notes the decision in Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) where the panel found that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the mark since 1999. Complainant here has continuously used the mark since 1913 and the Panel finds through this use complainant has acquired secondary meaning in the mark. As such, Complainaint has established, for purposes of the UDRP that it has rights in the WESTERN HEIGHTS WATER COMPANY and WHWC marks.
Complainant next asserts that Respondent’s <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names are confusingly similar to Complainant’s WESTERN HEIGHTS WATER COMPANY service mark. Respondent’s Disputed Domain Names merely eliminate the spaces between the words and add the gTLD “.com” or “.org.” Prior panels have found that merely removing spaces and adding a gTLD is not sufficient to establish that a disputed domain name is not identical to a complainant’s mark. 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”).
With the exception of the elimination of the spaces and the addition of the gTLD, Respondent’s <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names are identical to Complainant’s WESTERN HEIGHTS WATER COMPANY mark under Policy ¶ 4(a)(i). Complainant has satisfied this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Disputed Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges Respondent has no rights or legitimate interests in the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names. Complainant asserts Respondent is not commonly known by the Disputed Domain Names. On examination of the information in this case, the WHOIS information does not identify any Respondent as “Western Heights Water Company.” There is no other information to suggest Respondent is commonly known by the Disputed Domain Names. As such, the Panel finds the Respondent is not commonly known by the Disputed Domain Names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further argues Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Disputed Domain Names. Complainant explains that Respondent’s use of the Disputed Domain Names intends to gain an unfair economic advantage over Complainant, as well as mislead customers away from Complainant’s official website and tarnish Complainant’s name. Complainant argues that Respondent, Patrick Q. Kelly, learned of the WHWC marks in 2007, when he was approached by one of Complainant’s board members and asked to assist in reserving a domain name for potential future use. Complainant states that it is clear that in response to this request, Respondent decided to register the Disputed Domain Names himself with the intent to later demand that Complainant pay thousands of dollars. Complainant points out that Respondent first used the Disputed Domain Names to resolve to a simple one-page website referencing Complainant. The Panel notes that the previous web page that resolved from the Disputed Domain Names features Complainant’s company name and address. Prior panels have concluded that intentionally using a confusingly similar domain name to attract Internet users to a respondent’s website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds Complainant has prima facie established Respondent’s prior use of the Disputed Domain Names does not establish rights or legitimate interests in those domain names.
Complainant further explains that after Complainant refused to pay Respondent’s asking price in exchange for the Disputed Domain Names, Respondent changed its resolving websites to what appears to be slavishly copied versions of Complainant’s official website. Complainant provides evidence that Respondent’s current resolving websites also feature an article that allegedly advocates using minority residents as sources of water. Complainant contends the resolving website includes defamatory statements purportedly made by former members of Complainant’s board. Complainant’s Exhibit N shows Respondent’s Disputed Domain Names resolve to a website featuring Complainant’s name as the heading. The website displays article sub headings including “Los Angeles To Siphon Water From Minorities Bodies,” “Water Stock,” “Water Service Entitlement,” “Starting and Stopping services,” “Assessments” “Annual Stock Meeting,” and other headings which appear to be related to substantive information for Complainant’s business. Complainant additionally claims that if an Internet user clicks the “pay bill online” link provided on the resolving website, it resolves to a website asking for donations. Prior panels have frequently found that using a confusingly similar domain name to resolve to a website aimed at misleading Internet users away from a complainant’s legitimate website and to a respondent’s website looking to commercially profit, does not indicate a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Eagle Hill-Southport School, Inc. v. Abrams, J, FA 1364298 (Nat. Arb. Forum February 1, 2011) (finding that use of disputed domain name to display derogatory statements about Complainant and its staff is evidence of lack of rights and legitimate interests in a domain name.). Complainant further asserts in its additional submission that regardless of Respondent’s attempt to provide information on the resolving website, no respondent would be entitled to use the Complainant’s mark as its full domain name.
Given all of the foregoing, by causing the Disputed Domain Names to resolve to a webpage promoting Complainant’s own website, as well as including false information about Complainant, the Panel finds find Respondent is not using the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)
Complainant further points out that Respondent’s e-mail alludes to the fact that Respondent is willing to sell the Disputed Domain Names for at least $10,000. Respondent claims it had no intention of selling the Disputed Domain Names to Complainant and received an “unsolicited request” relating to their sales price. A review of the full information demonstrates Respondent provided as “options” to Complainant’s “envisioned problem” that Complainant could buy the Disputed Domain Names or they could be auctioned off. When Complainant inquired about an appropriate purchase price, Respondent stated the Disputed Domain Names have “been building their value for over 6 years,” and cited an article that $10,000 for a domain name “is still cheap.” The Panel notes that previously, panels have concluded that a willingness to sell a Disputed Domain Name might demonstrate lack of rights or legitimate interests. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)). The Panel concludes Respondent’s attempt to sell the Disputed Domain Name, given the specific circumstances, is suggestive of lack of rights or legitimate interests in the Disputed Domain Names.
Complainant has met the initial burden of establishing Respondent does not have rights or legitimate interests in the Disputed Domain Names. While Respondent suggests he acquired the Disputed Domain Names as a free service to a shareholder of Complainant, Respondent has not provided any evidence to substantiate that claim. Respondent has not produced any compelling evidence to establish Respondent does have any rights or legitimate interests. Complainant has established this element.
Complainant asserts Respondent registered and is using the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names in bad faith. Complainant contends it is clear Respondent registered the Disputed Domain Names with intent to sell them to Complainant for consideration far in excess of any out-of pocket expenses. Prior panels have continuously found that offering to sell a disputed domain name indicates bad faith use and registration under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
The Panel concludes based on all the circumstances here presented, that Respondent registered the Disputed Domain Names with the intent to sell them to Complainant. Respondent, knowing Complainant was interested in obtaining the Disputed Domain Names, purchased the Disputed Domain Names himself and held them for several years following which he attempted to sell them for consideration greater than any out-of-pocket expenses. Complainant’s material demonstrates that until Complainant contacted Respondent about his use of the Disputed Domain Names, Respondent used the Disputed Domain Names to resolve to a simple one-page website referencing Complainant. Respondent then informed Complainant it was welcome to make an offer on the Disputed Domain Names. As soon as Complainant refused to pay Respondent’s asking price in exchange for the Disputed Domain Names, Respondent changed its resolving website to what Complainant aptly describes as “slavishly copied version of Complainant’s official website”. These circumstances establish bad faith within Policy ¶ 4(b)(i).
Complainant also argues Respondent registered the Disputed Domain Names with the intent to disrupt Complainant’s business by misleading Internet users to a false website attempting to resemble Complainant’s official website. In Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) the panel found that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii). In the present case, a comparison of Respondent’s resolving websites with Complainant’s website reveals use of significantly identical content. Therefore, the Panel concludes “Respondent registered and is using the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names in bad faith under Policy ¶ 4(b)(iii).
Lastly, Complainant states Respondent had actual knowledge of Complainant and Complainant’s marks when it registered the Disputed Domain Names. Respondent admits that the registration of the Disputed Domain Names was with Complainant’s mark in mind. Instead of Complainant registering the Disputed Domain Names, Respondent registered them himself. This was done without Complainant’s consent. On the evidence, it is clear Respondent had actual knowledge of Complainant’s rights in the mark given Respondent’s prior conversations with Complainant’s board members as well as Respondent’s own assertions that he purposely registered the Disputed Domain Names to provide information regarding Complainant. As such, the Panel finds Respondent registered the Disputed Domain Name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Reverse Domain Name Hijacking
Given that Complainant has satisfied all elements of the Policy the Panel finds Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <westernheightswatercompany.com> and <westernheightswatercompany.org> domain names be TRANSFERRED from Respondent to Complainant
Anne M Wallace, QC, Panelist
Dated: June 28, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page