Aquascape Designs, Inc. v. Vertical Axis, Inc
c/o Domain Adminstrator
Claim Number: FA0601000629222
PARTIES
Complainant is Aquascape Designs, Inc., of the United States of America (“Complainant”), represented by Adesh Bhargava, of Dykema Gossett, PLLC, 1300 I Street, N.W., Suite 300 West, Washington, DC 20005. Respondent is Vertical Axis, Inc c/o Domain Adminstrator of Korea (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aquascape.com>,
registered with Nameview, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Honorable Timothy O’Leary, Steven L. Schwartz and Alan L. Limbury as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 17, 2006; the National Arbitration Forum received a
hard copy of the Complaint on January 20, 2006. On January 24, 2006, the
National Arbitration Forum drew to Complainant’s attention certain formal
deficiencies in the Complaint and Complainant amended the Complaint accordingly
on January 25, 2006.
On January 24, 2006, Nameview, Inc. confirmed by e-mail to the National
Arbitration Forum that the <aquascape.com>
domain name is registered with Nameview, Inc. and that the Respondent is the
current registrant of the name. Nameview,
Inc. has verified that Respondent is bound by the Nameview, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On January 25, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 14, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@aquascape.com by e-mail.
A timely Response was received and determined to be complete on February
14, 2006.
A timely Additional Submission was received from Complainant on
February 21, 2006 and was considered to be in accordance with The Forum’s
Supplemental Rule #7.
On February 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Honorable Timothy O’Leary, Steven L.
Schwartz and Alan L. Limbury as Panelists.
A timely Additional Submission was received from Respondent on February
27, 2006 and was considered to be in accordance with The Forum’s Supplemental
Rule #7.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1991 Complainant has provided water garden products and services
throughout the United States and Canada and is now North America’s largest
manufacturer and distributor of products used in the construction of
residential water gardens and water features.
Complainant claims common law rights in the trademarks AQUASCAPE
DESIGNS, AQUASCAPE DESIGNS, INC., and AQUASCAPE. In 1994 it obtained and
subsequently allowed to lapse four Illinois State trademark registrations for
the mark AQUASCAPE DESIGNS. On August 20, 2003 it registered the mark AQUASCAPE
DESIGNS (& LOGO) in Canada (No. TMA587538). Since at least October 5, 1999,
it has operated a website at www.aquascapedesigns.com.
Complainant says the disputed domain name aquascape.com, which
Respondent registered on September 7, 2003, is identical to or confusingly
similar to Complainant’s AQUASCAPE DESIGNS word and designs marks.
Respondent has no rights or legitimate interests in the disputed domain
name because it is not selling anything at its aquascape.com website that could
be described by the word “aquascape”. Rather, it operates a directory portal
that contains a series of hyperlinks for searchable categories in the water
garden field, as well as direct links to water garden-related sites primarily
featuring Complainant’s competitors, with limited reference to Complainant’s
site. The site also generates pop-up
advertisements. In any event, Complainant submits AQUASCAPE is a distinctive
trademark rather than just a descriptive word that may be used merely in a
descriptive sense in a fair use.
Respondent is not known by the domain name and was not authorized by
Complainant to register it.
Respondent is using the domain name misleadingly to divert consumers
searching for Complainant or its authorized affiliates to Respondent’s website
and thereafter directing them to web sites that sell and offer for sale
products and services in the water garden field that are not affiliated with
Complainant.
Respondent registered and is using the disputed domain name in bad
faith to attract consumers to its website based upon Complainant’s reputation
and goodwill and to direct them to products unaffiliated with Complainant.
Respondent’s actions disrupt Complainant’s business by providing links
to Complainant’s competitors, confusing consumers into thinking they are
affiliated with or endorsed by Complainant.
Respondent has intentionally attempted to attract Internet users to its
website for pop-up advertising revenue and to divert customers of Complainant
by creating a likelihood of confusion with Complainant’s AQUASCAPE word and
design marks as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.
B. Respondent
Complainant has no enforceable rights under the Policy because
“aquascape” is generic, short for “aquatic landscape.” It describes
Complainant’s business: providing aquatic landscaping services. Complainant’s
only registered mark is a Canadian mark for Aquascape Designs, registered only
about two weeks before the disputed domain name. Complainant has not provided
adequate proof of common law rights in “aquascape.”
Respondent has rights and a legitimate interest in the disputed domain
name because it incorporates the generic term “aquascape,” which is used by
numerous third parties who market, through their websites, the same services as
Complainant. Mere registration of a generic term establishes Respondent’s
legitimate interest. Further, Respondent hosts the disputed domain name on a
web site that provides sponsored links (provided by Yahoo Search Marketing)
related to aquatic sports, such as snorkeling, water skiing and boating. This
bolsters its legitimate interest, based on a bona fide offering of advertising
services.
Respondent denies bad faith registration or use and says it is
impossible to prove bad faith registration because Respondent had no knowledge
of Complainant’s business name or alleged mark when it registered the disputed
domain name. It cannot be inferred that Respondent registered the disputed
domain name with Complainant in mind, particularly having regard to the
substantial third party use of the term “aquascape.” A factor weighing against a finding of bad faith is that
Respondent registered the disputed domain name when it was deleted and became
available for anyone to register. Registering a common generic word does not
constitute bad faith.
In support of its contentions Respondent relies on an unsworn
declaration by Chad Park, a manager of Respondent.
C. Additional Submissions
Complainant
The English language does not include the word “aquascape.” Dictionary.com has no entry for it. “Aquascape” has become distinctive of
Complainant’s goods and services. Many of the third party uses on which Respondent
relies are by Complainant’s customers or certified contractors, whose use is
authorized by Complainant, or by persons outside the United States or by
Complainant itself. Unlike Respondent’s
website as at January 25, 2006, none of the websites mentioned in the Response
that are unaffiliated with Complainant featured references to Complainant’s
name, products and websites.
Respondent’s website as at January 25, 2006 created a false appearance
of an affiliation with Complainant. After the Complaint was filed Respondent
changed its website to remove all references to Complainant’s products and
services and replace them with a list of snorkeling and other water
sports-related websites. This supports the view that Respondent has no
legitimate interest in the domain name and negates its denial of bad faith.
Respondent
Regardless
of whether “aquascape” is recognized by the dictionary, it is used as a term by
thousands throughout the world to describe businesses similar to that of
Complainant. There are over 200,000 other third party uses of the term when
those alleged to be affiliated with Complainant are excluded. Foreign uses are
still third party uses.
The
links on Respondent’s website were auto-generated by Yahoo and not placed there
by Respondent. Those that related to Complainant’s business appeared there as a
result of the fact that advertisers bid for the term “aquascape” on
<yahoo.com>, which was the source of the links provided in connection
with Respondent’s affiliate relationship with Yahoo. These “sponsored” links
appear as a result of a search query for “aquascape,” along with related
categories. Accordingly, the fact that links related to Complainant were among
those appearing on Respondent’s website is not evidence of an intent to confuse
consumers because Respondent did not take any affirmative actions to make those
links appear there.
After
the Complaint was filed, Respondent changed the links to eliminate the
appearance of an intent to confuse consumers. Respondent’s counsel did not
mention the change in the Response because he was unaware of it.
In any
event, Respondent never heard of Complainant prior to receipt of the Complaint
and did not place the links on the site that related to Complainant’s business.
Respondent was not even aware of the links that were on the site prior to the
Complaint being filed.
Respondent
owns thousands of domain names and is not aware of what links Yahoo causes to
appear on its many domain name sites. At no time did Respondent intend to
create confusion, which is the requisite element under the Policy to establish
bad faith.
FINDINGS
Complainant has not established all the
elements necessary and is not entitled to relief.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 does not accept that the word
“aquascape” is generic. The Panel has not found it in an English dictionary. In
any event, the suffix “-scape” indicates a view or expanse of a particular
location; streetscape, desertscape, sandscape, cityscape [from (land)scape].
Accordingly, even if “aquascape” were to be regarded as a common English word,
its meaning would be “a view or expanse of water”. That is not the sense in
which Complainant has been using the word in connection with water-related
goods and services.
Nevertheless, the word “aquascape” is in
common use descriptively by others, unaffiliated with Complainant, in
connection with water-related goods and services, to such an extent that the
Panel is not satisfied that the word “aquascape” has become, through use by
Complainant in that field, distinctive of its goods and services. The fact that
Complainant is frequently referred to as Aquascape, as a shortened form of its
corporate name, does not alter this conclusion. The Panel therefore does not
find, on the material before it, that Complainant has common law rights in the
mark Aquascape.
On the other hand, the evidence of use
accompanying the Complaint satisfies the Panel that Complainant has common law
rights in the mark AQUASCAPE DESIGNS in connection with various goods and
services relating to residential water gardens and water features. Further, the
word “aquascape” is the dominant feature of both that mark and Complainant’s
Canadian registered trademark AQUASCAPE DESIGNS (& LOGO).
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979), which are usually considered in trademark infringement or unfair competition cases. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); see also Northern Light Tech., Inc. v. N. Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The disputed domain name wholly incorporates
the distinctive feature of Complainant’s common law mark AQUASCAPE DESIGNS and
of its Canadian registered trademark AQUASCAPE DESIGNS (& LOGO), to which
it is confusingly similar. The “.com” gTLD is inconsequential.
Complainant’s
Illinois State trademark registrations are irrelevant both because they have
lapsed and because State registrations are not examined and thus do not
represent persuasive evidence of ownership of a valid, distinctive
trademark. Randan Corp. v. Rapazzini
Winery, D2003-0353 (WIPO July 28, 2003) at n.1.
Complainant has established this element of
its case.
Complainant has shown that Respondent has never been known by the name “aquascape”, does not conduct business under that name and was not authorized by Complainant to register a domain name which incorporates the word ‘aquascape’, being the dominant feature of Complainant’s common law and registered mark AQUASCAPE DESIGNS. This establishes a prima facie case against Respondent. The burden therefore shifts to Respondent to provide evidence of its right or legitimate interests under ¶ 4(c) of the Policy. Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, D2004-0753 (WIPO Nov. 11, 2004).
Respondent seeks to demonstrate its rights or legitimate interests in the disputed domain name by showing that, before any notice to it of this dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Respondent relies foremost on “aquascape” being a generic term which anyone may legitimately register. The Panel has rejected this, whilst recognizing that the term is subject to substantial third party descriptive use in the relevant field.
The sporting links that appeared on Respondent’s website after receipt of the Complaint are not relevant under Policy ¶ 4(c)(i).
Before notice of this dispute (by way of the filing of the Complaint), Respondent used the disputed domain name in connection with the provision of advertising services. It made an arrangement for Yahoo! to display advertisements on Respondent’s website at www.aquascape.com. Advertisers paid Yahoo! to have their advertisements brought to the attention of Internet users entering the word “aquascape” into their browsers. The advertisements appearing on Respondent’s website in consequence of this arrangement included links to the advertisers’ websites, in some cases operated by competitors of Complainant and in others operated by Complainant itself or its affiliates. Those advertisements could also be found by entering “aquascape” into a Yahoo! browser.
Absent proof of bad faith, this kind of advertising activity demonstrates a legitimate interest in the domain name on the part of Respondent. First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004).
The
thrust of Complainant’s case is that Respondent registered the disputed domain
name intending to take advantage of Complainant’s goodwill for Respondent’s own
gain. Respondent contends that the fact that links related to Complainant were
among those appearing on Respondent’s website is not evidence of an intent to
confuse consumers because Respondent did not place those links there.
Having found that Complainant has not shown that it has trademark
rights in the word “aquascape” standing alone because that word is in common
use descriptively by others, unaffiliated with Complainant, in connection with
water-related goods and services, the Panel is unable to conclude that
Respondent had Complainant in mind either when registering the disputed domain
name or prior to notice to it of the dispute. This finding is fatal to
Complainant’s case on bad faith (see below) and also supports Respondent’s
claim to have a legitimate interest in the disputed domain name.
Complainant has failed to establish this
element of its case.
As mentioned, because Complainant has not established that it has
trademark rights in the word ‘aquascape’ standing alone and because that word
is subject to substantial third party use in this field, the Panel is unable to
conclude that Respondent had Complainant in mind either when registering the
disputed domain name or prior to notice to it of the dispute. See Ohio Savings Bank d/b/a AmTrust v. Manfred Kempa, FA605065 (Nat.
Arb. Forum Dec. 12, 2005) (finding ‘while Complainant’s trademark may
not be generic, the term is of such common use in the state where Respondent
conducts business and where Complainant does not do so, that it is difficult to
conclude that there was a deliberate attempt to confuse on Respondent’s part
and register the domain in bad faith’). This is fatal to Complainant’s case on
bad faith. DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (finding ‘Respondent’s registration
cannot have been in bad faith if, at the time, it had not heard of
Complainant’); Meguiar's,
Inc. v. Target Online Inc, FA
435003 (Nat. Arb. Forum Mar. 8, 2005).
Although the
circumstances taken to constitute evidence of both bad faith registration and
bad faith use contained in paragraph 4(b) of the Rules are not exhaustive, they
all require some proof of intent or purpose on the part of Respondent vis à vis
Complainant or its mark.
The suggestion has been made by the learned
panelist in the recent case of Mobile
Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 4, 2006) that in some circumstances recklessness as to
whether a domain name corresponds to a trademark may give rise to a finding of
bad faith under paragraph 4(b)(ii) of the Policy. In light of the extensive
third party descriptive use of the term ‘aquascape’ in the relevant field and
the absence of any trademark rights in Complainant in that word standing alone,
this Panel is not prepared to find that Respondent’s lack of knowledge of the
advertisements it allowed Yahoo! to post on Respondent’s website amounted to
recklessness. Accordingly it is not necessary in this case to decide whether
recklessness can amount to evidence of bad faith generally or for the purposes
of any of the other sub-paragraphs of Rule 4(b).
Complainant has
failed to establish this element of its case.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Alan L. Limbury, Presiding Panelist
Honorable Timothy O’Leary & Steven L. Schwartz,
Panelist
Dated: March 7, 2006
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