Registros Internacionales Aplicados, S.L. v. RAFAEL ESCALAS / AGON SPORT LLC
Claim Number: FA1504001615317
Complainant is Registros Internacionales Aplicados, S.L. (“Complainant”), represented by David K. Friedland of Friedland Vining, P.A., Florida, USA. Respondent is RAFAEL ESCALAS / AGON SPORT LLC (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <turboswim.com>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2015; the Forum received payment on April 20, 2015.
On April 20, 2015, ENOM, INC confirmed by e-mail to the Forum that the <turboswim.com> domain name is registered with ENOM, INC and that Respondent is the current registrant of the name. ENOM, INC has verified that Respondent is bound by the ENOM, 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 April 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2015 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@turboswim.com. Also on April 23, 2015, 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 May 12, 2015.
Complainant’s additional submission was received and determined to be complete on May 18, 2015.
On May 21, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne as Panelist.
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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that Respondent’s domain name <turboswim.com> is confusingly similar to its trademark TURBO; that Respondent has no rights or legitimate interests with respect to the domain name; and that Respondent registered and used the infringing domain name in bad faith.
B. Respondent
Respondent contends that Respondent and Complainant were business affiliates when the <turboswim.com> domain name was purchased on October 4, 1997, for use by Turbo Swimwear Inc. When the business dissolved in 2000, the site was used to sell off the remaining inventory, after which Respondent “put up a webpage at [<turboswim.com>] that indicated that Turbo was owned and operated by Crotten SA in Spain, with a link to Turbo’s homepage (turbo.es)”…as well as “a link to Agron’s homepage (agronswim.com). In June 2012, Agron Sport LLC began migrating the website to cloud servers. In August 2013, the domain name erroneously pointed to Respondent’s <argonswim.com> website, agronswim.com. Respondent later changed the site’s content so that the web page references both Complainant’s website (<turbo.es>) and Respondent’s website (<agronswim.com>).
C. Additional Submissions
A timely Additional Submission was received from Complainant on May 19, 2015. The Additional Submission noted that Respondent did not deny, as a direct competitor, it was using the domain name to divert Internet users to its competing business; and did not deny that the disputed domain name is confusingly similar to Complainant’s TURBO trademark.
Complainant owns two U.S. trademark registrations for TURBO (U.S. Reg. Nos. 829,807 and 886,768). The registrations cover water-proof knitted isothermal and elasticized garments—namely, rubberized suits for water-skiing, surfing, and underwater fishing, and bathing suits and girdles and corsetry in general, men’s, women’s, and children’s underwear. The two U.S. trademark registrations were filed on June 6, 1967 and May 5, 1969, respectively. Complainant has used the TURBO mark in connection with its swimwear and related accessories, including water polo caps and balls, bags, goggles, and sandals.
Complainant has done business under the “Turbo” trade name around the world for over 50 years. Since its inception, Complainant has become a leader in the competitive swimming, water polo and triathlon industries. Athletes have high regard for Complainant’s TURBO branded garments. Complainant’s use of the TURBO mark has generated goodwill and consumer recognition. Complainant also owns numerous domain names that incorporate the word “turbo,” including <turbo.es>, <turbo.us>, <truboshop.es>, <turbowaterpolo.com>, and <turbobeauty.es>.
Complainant and Respondent were business affiliates when the domain name was purchased on October 4, 1997. When their affiliation dissolved, the website associated with the disputed domain name indicated that Respondent had started a new business located at <agonswim.com> and included a link to the homepage. After a transition to cloud servers, the disputed domain name <turboswin.com> automatically redirected Internet users to <agonswim.com> until Respondent caught the error. Currently, the disputed domain name is associated with a website with information about Complainant’s <turbo.es> website as well as Respondent’s <agonswim.com> website.
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 used the TURBO mark in association with swimsuits and other products since at least 1967, according to the evidence submitted by Complainant and Complainant’s two U.S. trademark registrations for TURBO. Complainant’s evidence supports a finding that Complainant owns ¶4(a)(i) rights in the name and mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (“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.”).
Respondent essentially concedes the confusing similarity between Complainant’s TURBO mark, as compared to <turboswim.com>, choosing instead to focus on the other two elements of the Policy.
The <turboswim.com> domain name incorporates Complainant’s TURBO mark in its entirety with the addition of a generic/descriptive term (swim) and a generic top-level domain (.com). The mere addition of a generic/descriptive term and/or a generic top-level domain is insufficient to distinguish the domain name from Complainant’s mark. Panels have found in the past that such alterations to a registered mark fail to negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). The term “swim” is generic with respect to Complainant’s business and therefore does nothing to prevent likelihood of confusion.
For the foregoing reasons, the Panel holds that the disputed domain name is confusingly similar to Complainant’s trademark, and that Complainant has satisfied the requirements of Policy ¶4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii), and then the burden shifts to Respondent to demonstrate his 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 its rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arg. 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 a legitimate interest in the subject domain names.”)
In this case, there is nothing in the record, including the WHOIS registration information to indicate that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Cricket Techs., L.L.C. v. Martin, FA 311353 (Nat. Arb. Forum Sept. 27, 2004) (“Although Respondent is listed as the Administrative contact in the WHOIS domain name registration information, nothing suggests that Respondent is commonly known by the <crickettechnologies.com> domain name pursuant to Policy ¶ 4(c)(ii).”); see also Target Brands, Inc. v. Hosting Provider Serv., FA 187396 (Nat. Arb. Forum Sept. 30, 2003) (“While Respondent may have held itself out as TARGETPILLS.COM on its website at <targetpills.com>, there is no evidence that Respondent was actually or commonly known by the disputed domain name.).
In responding to this Complaint, Respondent asserted that the purpose of the <turboswim.com> website was to conduct Turbo Swimwear Inc.’s business, which had been owned and operated jointly by Complainant and Respondent until its dissolution in 2000. After the business dissolved, the <turboswim.com> website referenced and linked to Respondent’s new business located at <agonswim.com>, after which Respondent changed the <turboswim.com> website to include links to both <turbo.es> (operated by Complainant) and <agronswim.com> (operated by Respondent). See Resp., at Attached Annex 2.
Respondent has submitted no proof that Complainant had authorized Respondent to continue using of the <turboswim.com> domain name. Rather, Respondent cites to the joint business between Respondent and Complainant as authorizing use of the domain name. However, being Complainant’s former business partner does not provide legitimate rights to own the domain name. See LA Millennium Video Prod. v. Classic Moments Video Prod., FA 856336 (Nat. Arb. Forum Jan. 12, 2007) (respondent’s status as complainant’s former business partner did not equate to rights or legitimate interests in the disputed domain names according to Policy [¶] 4(c)(ii).”
Therefore, in light of the fact that Respondent has failed to provide evidence of its authorized use of the <turboswim.com> domain name, this Panel finds that Respondent does not have any rights under Policy ¶ 4(c)(ii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Moreover, Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Rather, the resolving website evidently sells products which directly compete with Complainant’s business purposes. See Compl., at Attached Annex F. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel agreed that Respondent’s redirection of Internet users to its own competing site evinces no rights or legitimate interests according to Policy ¶ 4(c)(i) and (iii) by stating, “The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”
In view of the above, the Panel holds that Respondent’s use of the <turboswim.com> domain name to promote a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Accordingly, the Panel holds that Respondent has failed to prove rights or legitimate interests pursuant to Policy ¶4(a)(ii).
Complainant alleges that Respondent used the <turboswin.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) to disrupt Complainant’s business under Policy ¶ 4(b)(iii) by redirecting Internet users to Respondent’s competing business’s website. See Compl., at Attached Annex F. This Panel notes that previous panels have found bad faith where a respondent has used a domain name with intent to disrupt complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion). Respondent is a direct competitor of Complainant who used a confusingly similar domain name that redirected Internet users to its own competing website, <agonswim.com>. As such, the evidence demonstrates a likely intent to disrupt Complainant’s business and create user confusion. Compare Resp., at Attached Annex 2 (screenshot of resolving site), with Compl., at Attached Annex F (screenshot of <agonswim.com>, which purportedly redirects, or has in the past, from the <turboswim.com> domain name).
Panels have also found bad faith where a competitor of a complainant profited from Internet user confusion. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Further, Respondent must have had actual notice of Complainant's rights in the TURBO mark prior to registration and during use of the <turboswim.com> domain name because of Complainant's widespread use of the mark, its trademark registrations with the USPTO, and Respondent’s prior business relationship with Complainant. Against this background, Respondent’s continued use of the disputed domain name to link and/or redirect customers to the competing website was in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
The Panel concludes that Respondent’s commercial use of the confusingly similar domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). The disputed domain name includes a redirection and/or a direct link to the competing website of Respondent and shows Respondent’s intent to profit from a likelihood of confusion with Complainant’s mark. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
In view of the above, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <turboswim.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: June 2, 2015
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