Ultramax Products Ltd v. anthony mitchell
Claim Number: FA1712001764052
Complainant is Ultramax Products Ltd (“Complainant”), United Kingdom. Respondent is anthony mitchell (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hydromaxdirect.com>, registered with GoDaddy.com, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2017; the Forum received payment on December 22, 2017.
On Dec 22, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hydromaxdirect.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2018 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@hydromaxdirect.com. Also on January 2, 2018, 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 January 22, 2018.
An Additional Submission was received from Complainant on January 25, 2017 and from Respondent on January 27, 2017.
On January 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Ultramax Products Ltd, uses the HYDROMAX mark to offer a product to enhance male genitals and has rights in the mark based upon its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,303,440 registered Mar. 19, 2013). See Compl. Annex 3. Respondent’s <hydromaxdirect.com> domain name is confusingly similar to Complainant’s HYDROMAX mark.
Respondent’s use of the <hydromaxdirect.com> disputed domain name does not amount to a legitimate noncommercial or fair use. Rather, the domain name is used to suggest the goods sold by Respondent are official HYDROMAX products, when they are in fact counterfeit.
Respondent registered and is using the <hydromaxdirect.com> domain name in bad faith. Respondent uses the HYDROMAX trademark in a domain name to intentionally attract Internet users for commercial gain.
B. Respondent
Respondent’s registration does not infringe on Complainant’s rights, as Complainant has not established acquired distinctiveness in the HYDROMAX mark. Further, the inclusion of the word “direct” distinguishes the <hydromaxdirect.com> domain name from the HYDROMAX mark because the added term does not have any link with Complainant’s business or trademark.
Respondent has rights and/or interests in the <hydromaxdirect.com> domain name, as it has used the name for two and a half years to sell various products which relate to the enhancement of male genitals. Respondent does not present itself as Complainant, and has purchased the products it offers from qualified wholesalers. See Resp. Annex 2. Further, the term “hydromax” is generic, and is used in various markets. See Resp. Annex 5.
Respondent did not register and has not used the <hydromaxdirect.com> domain name in bad faith. Since Respondent is a retailer and Complainant is a manufacturer, the two are not in the same market and do not compete. Further, Respondent does not attempt to pass off as Complainant, and has designed its website to look different from Complainant’s. Compare Resp. Annex 7 (Respondent’s website) with Annex 8 (Complainant’s website).
Complainant is abusing the administrative process, and attempting to engage in reverse domain name hijacking. Further, the person who submitted the Complaint is a secretary for Complainant’s company and does not have authority to file the Complaint on behalf of Complainant’s company.
C. Additional Submissions
Complainant
Complainant further points out that the inclusion of the word “direct” in the disputed domain name does not distinguish the disputed domain name from Complainant’s trademark. It also points out that, as Complainant has a United States federal registration for HYDROMAX, it need not have secondary meaning in its mark in order to have rights herein. Complainant further points out that it has no issue with non-competing businesses using the HYDROMAX mark; however, it points out that Respondent is not using the mark in these businesses but rather in a business that specifically overlaps with Complainant. Finally, Complainant points out that while the designs of the Complainant’s web site and the Respondent’s web site may differ, Respondent is using this disputed domain name to redirect Internet traffic to it and away from Complainant.
Respondent
Respondent reiterates its claim that the inclusion of the word “direct” in the disputed domain name adequately distinguishes the disputed domain name from Complainant’s trademark. Respondent also claims that, as the mark HYDROMAX is used in many markets, Complainant cannot claim exclusivity in its use. Respondent argues that it adequately distinguishes HYDROMAX from HydromaxDirect. Respondent further takes issue with Complainant’s claim that its device is approved by the FDA. Finally, Respondent points out that mere assertions of bad faith do not amount to bad faith. Evidence must be provided of such bad faith.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; however, the Panel also finds that Complainant has failed to carry its burden of proof regarding the elements of rights and legitimate interests and 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.
The Panel finds that the disputed domain name, <hydromaxdirect.com> is confusingly similar to Complainant’s valid and subsisting trademark, HYDROMAX. Complainant has adequately plead its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely appending the generic word “direct” to this trademark and adding the g TLD “.com.” Respondent would have this Panel rely on the distinctiveness of this trademark and its ability to exclusively identify the Complainant as the seller of male enhancement devices; however, that is not the inquiry at this point. The sole issue to determine whether Complainant has rights in this mark is to determine if it was registered with some competent authority. Complainant is not relying on common law use of this mark to establish rights, where the distinctiveness of the mark may be an issue. Complainant is relying on the fact that it is registered with a competent authority which establishes rights for the purposes of this proceeding.
Respondent further claims that the inclusion of the word “direct” in the disputed domain name distinguishes the disputed domain name from Complainant’s trademark just as the inclusion of the word “sucks” might distinguish a corporation from its goods or services as in <lockheedsucks.com>. See Lockheed Martin Corporation v. Parisi, D2000-
1015 (WIPO Jan. 26, 2001). However, this argument is not compelling. Adding the word “sucks” to a trademark gives an entirely different connotation to adding the generic and nonjudgmental word “direct.” As such, the Panel dismisses this line of argument.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
However, the Complainant has failed to carry its burden of proof regarding the element of whether Respondent has rights or legitimate interests in or to the disputed domain name. Complainant claims—without evidence—that Respondent uses the disputed domain name to mislead consumers and suggest goods offered are official HYDROMAX products, when they are in fact counterfeit.
Respondent claims it has rights and/or interests in the <hydromaxdirect.com> domain name, because it uses the name to offer for sale various products. Respondent claims it uses the name to sell Complainant’s and other related goods, which it acquires from qualified wholesalers. See Resp. Annexes 7 and 2 (Website resolving from the <hydromaxdirect.com> domain name, and receipts from wholesalers, respectively). The Panel finds that this use seems to indicate Respondent has rights and/or legitimate interests in the disputed domain name per Policy ¶ 4(c)(i). With no evidence offered by Complainant to the contrary, the Panel finds that this evidence indicates Respondent has rights or legitimate interests in and to the disputed domain name.
Respondent also claims it does not present itself as Complainant at the resolving website. Passing off behavior can indicate a respondent does not have rights and/or legitimate interests in a domain name. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Respondent claims its website does not resemble Complainant’s, and thus Respondent should not be considered to be attempting to pass off as Complainant. Compare Resp. Annex 7 (Respondent’s website) with Annex 8 (Complainant’s website). The Panel finds Respondent is not attempting to pass off as Complainant in a manner which would indicate it does not have rights or legitimate interests in the domain name per Policy ¶ 4(c)(i) or (iii).
Respondent further argues that the HYDROMAX term of the <hydromaxdirect.com> domain name is common, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. A respondent can be found to have rights or legitimate interests in a domain name where the terms that make up the name are commonly used or generic. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields). Respondent offers evidence that the term HYDROMAX is used in various markets by other businesses. See Resp. Annex 5. Again, as stated above, there is nothing in the Policy that demands express exclusivity of use of a trademark before there are cognizable rights under the Policy. As such, the Panel dismisses this argument regarding a need for exclusive use.
The Complainant has also failed to carry its burden regarding bad faith. Complainant claims Respondent’s use of the <hydromaxdirect.com> domain name to intentionally attract Internet users for commercial gain indicated the name was registered and used in bad faith. Such use of a domain name can indicate bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products). Complainant claims—without evidence—that Respondent uses the name to suggest Complainant’s endorsement of the domain name in order to sell counterfeit products.
However, Complainant has proffered no evidence to support such a claim
The evidence that was offered to this Panel supports Respondent’s contentions that it did not act in bad faith under the Policy. Respondent argues that as a retailer, it is not a competitor of Respondent’s and thus does not use the <hydromaxdirect.com> domain name to compete with Complainant’s business. Where a respondent does not compete with a complainant, a panel may decline to find bad faith per Policy ¶ 4(b)(iii). See PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine). Respondent claims that as a retailer, it does not compete with Complainant and in fact buys the products it offers from affiliates of Complainant. See Resp. Annex 2 (receipts of purchase from the <bathmatedirectwholesale.com> and <pinkcherrywholesale.com> websites). The Panel finds this is not a competitive use and does not indicate the domain name was registered or used in bad faith.
Respondent claims the website resolving from the <hydromaxdirect.com> domain name does not create any likelihood of confusion with Complainant.
Respondent claims the website design for its website is “strikingly different” from that of Complainant’s website. Compare Resp. Annex 7 (Respondent’s website) with Annex 8 (Complainant’s website).
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <hydromaxdirect.com> domain name, of its rights to use the disputed domain name. Respondent claims Complainant made allegation as to all three of the Policy factors, but did not make any attempt to prove its allegations. Respondent further claims Complainant is on a spree to register many domain names with terms such as “BatheMate” and “Hydromax,” which questions whether Complainant needs the transfer of the name. See Resp. Annex 9. To show reverse domain name hijacking, Respondent most show knowledge of the lack of support for Complainant’s claim and harassing activity by Complainant. See NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (“To establish reverse domain name hijacking, Respondent must show knowledge on the part of the complainant of the Respondent’s right or legitimate interest in the Domain Name and evidence of harassment or similar conduct by the Complainant in the fact of such knowledge.”); see also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”). As there is no evidence in this record of Complainant engaging in the requisite harassing activity specifically against Respondent, Respondent’s claim of reverse domain name hijacking is hereby dismissed.
As such, the Panel finds that Complainant has failed to carry its burden of proof and, therefore, does not find bad faith use and registration under the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <hydromaxdirect.com> domain name remain with the Respondent.
Kenneth L. Port, Panelist
Dated: January 29, 2018
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