Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA1806001792308
Complainant is Nestlé Waters North America, Inc. (“Complainant”), represented by Virginia L. Carron of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Georgia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ozarka.com> and <ozaraspringwater.com>,(‘the Domain Names’) registered with Media Elite Holdings Limited.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 18, 2018; the Forum received payment on June 18, 2018.
On June 20, 2018, Media Elite Holdings Limited confirmed by e-mail to the Forum that the <ozarka.com> and <ozaraspringwater.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 June 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@ozarka.com, postmaster@ozaraspringwater.com. Also on June 20, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
In 1987 Perrier Group of America Inc. (‘Perrier’) bought Ozarka Spring Water.
Perrier owned ozarka.com prior to its current creation date of May 13, 2002, but inadvertently allowed it to lapse. Perrier was bought by Nestle Waters forming the Complainant in 1992. Complainant owns the ozarkawater.com domain name registered in 1999 and OZARKA water has been advertised there since at least 2001. The OZARKA mark has been used by the Complainant or its predecessors since 1905.
The Complainant owns the trade mark OZARKA registered, inter alia, in the USA since 1967 for drinking water.
Ozarka.com was registered by the Respondent in 2002. Ozaraspringwater.com was registered by the Respondent in 2013.
Starting around 2013 when the current Respondent took ownership of the Domain Names the ozarka.com domain redirected users to the ozaraspringwater.com website which feature links which directly relate to the Complainant’s business and connects to web pages featuring sponsored link advertisements for commercial gain and for web sites that compete with Complainant. Ozarka.com is inactive and for sale for a minimum of $500.
The Domain Names are confusingly similar to the Complainant’s OZARKA mark incorporating it in its entirety. The only difference between ozaraspringwater.com is that OZARKA is misspelled omitting the ‘k’, the generic/descriptive words ‘spring’ and ‘water’ are added reflecting the Complainant’s business and the gTLD which is not sufficient to distinguish the Domain Names from the Complainant’s OZARKA mark. For ozarka.com the addition of the top level domain .com is irrelevant in the confusing similarity test under the Policy. OZARKA is a distinctive and non descriptive mark.
Respondent has no rights or legitimate interests in the Domain Names. Typosquatting is evidence of the lack of such rights. Respondent is not commonly known by the Domain Names and Complainant has not authorised the Respondent to use the Complainant’s OZARKA mark or signs confusingly similar to the same. Use for pay per click advertisements is not a bona fide offering of goods or services or a legitimate non commercial or fair use.
Registration and use of the Domain Names must be evaluated from the time Respondent took control of the Domain Names in 2012-2013, but no earlier than March 2010.
Respondent registered and used the Domain Names in bad faith to intentionally attract users to its website for commercial gain under Policy 4 (b)(iv). This also disrupts the Complainant’s business under Policy 4 (b)(iii).
The registration and use by the Respondent of ozarka.com is also bad faith because it is being offered for sale under Policy 4 (b)(i).
The registration and use by the Respondent of ozaraspringwater.com is bad faith as typosquatting is bad faith per se under Policy 4 (b)(iii).
Use of a privacy service to register the Domain Names is evidence of bad faith registration and use.
Registration and use of the Domain Names constitutes bad faith under Policy 4 (b) (ii) because it demonstrates a pattern of bad faith conduct.
The fact that the Domain Names link to pages directly relevant to the Complainant’s business shows the Respondent is aware of the Complainant and its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the trade mark OZARKA registered, inter alia, in the USA since 1967 for drinking water with first use recorded as 1905.
The Domain Names have been pointed to pay per click links including those of a competing nature. Ozarka.com has been offered for sale for $500.
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(f), 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 (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 or Confusingly Similar
Ozarka.com consists of the Complainant’s OZARKA mark (registered, inter alia, in the USA since at least 1967 for drinking water) and the gTLD .com.
Ozaraspringwater.com consists of a sign confusingly similar to the Complainant’s OZARKA mark merely omitting the ‘k’ and adding the generic words ‘spring’ and ‘water’ and the gTLD.com.
The Panel agrees that misspellings such as omission of a letter does not distinguish ozaraspringwater.com from the Complainant's OZARKA trade mark pursuant to the Policy. See Hallelujah Acres Inc v Manila Indus., Inc., FA 805029 (Forum Nov 15, 2006).
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of the generic word ‘spring’ and ‘water’ does not distinguish the Domain Names from the Complainant's trade mark pursuant to the Policy especially as the Complainant is in the drinking water business.
The gTLD .com does not serve to distinguish the Domain Names from the OZARKA mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the TLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has used the site attached to the Domain Names for links offering competing products not connected with the Complainant. The Respondent does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services.)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Names by the Respondent in 2013 when the Respondent acquired the Domain Names in relation to the site is confusing and disruptive in that visitors to the sites might reasonably believe they are connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to point to competing dealerships not connected with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those third party businesses and was therefore evidence of bad faith and use). Use to point to a site that has links relating to the Complainant’s business shows that the Respondent is aware of the Complainant and its business.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(iii). It is also noted that ozarka.com has been offered to sale in bad faith contrary to Policy 4 (b)(i). With regard to ozaraspringwater.com typosquatting per se has also been held by previous panels to be bad faith registration and use per se. It is not necessary to consider further alleged grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ozarka.com> and <ozaraspringwater.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: July 22, 2018
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