Waterplay Manufacturing Inc. v. Stephen Edwards
Claim Number: FA0705000982430
Complainant is Waterplay Manufacturing Inc. (“Complainant”), represented by Helen
Yu, of Beairsto Sabey, Barristers & Solicitors,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <waterplayfeatures.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 12, 2007 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@waterplayfeatures.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <waterplayfeatures.com> domain name is confusingly similar to Complainant’s WATERPLAY mark.
2. Respondent does not have any rights or legitimate interests in the <waterplayfeatures.com> domain name.
3. Respondent registered and used the <waterplayfeatures.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Waterplay
Manufacturing Inc., is a designer and builder of water park projects around the
world specializing in safe, accessible water toys for children of all ages and
abilities. Complainant has designed and
built over 1300 water parks worldwide, including over 900 in the
Respondent registered the <waterplayfeatures.com>
domain name on
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Kinderplay Designs, Inc. has established rights in the WATERPLAY
mark pursuant to Policy ¶ 4(a)(i) through its official registrations of the mark in the
Respondent’s <waterplayfeatures.com> domain name is confusingly similar to Complainant’s WATERPLAY mark pursuant to Policy ¶ 4(a)(i) because the domain name contains the WATERPLAY mark in its entirety, adds the term “features,” and adds the generic top-level domain “.com” which does not sufficiently distinguish the domain name from the registered mark. See Ferrari S.p.A. v. Am. Entm’t Group, Inc, D2004-0673 (WIPO Oct. 10, 2004) (“[T]he addition of the term ‘owner’ [to complainant’s FERRARI mark] is not deemed sufficient to prevent the risk of confusion.”); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent has no rights or
legitimate interests in the <waterplayfeatures.com>
domain name. Complainant therefore has
made a prima facie case in support of
its allegations and the burden subsequently shifts to Respondent to show that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Since
Respondent failed to respond to the Complaint, the Panel assumes that
Respondent does not have rights or legitimate interests in the disputed domain
name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must
first make out a prima facie case that a respondent lacks rights or
legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to a respondent to show that
it does have rights or legitimate interests in a domain name); see
also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Respondent is using the <waterplayfeatures.com>
domain name, which is confusingly similar to Complainant’s WATERPLAY
mark, to sell water park design and construction services, which directly
compete with Complainant’s identical water park services. The Panel finds such use of the disputed
domain name does not
constitute a bona fide offering of
goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of
the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA
113961 (Nat. Arb. Forum
Complainant asserts that
Respondent is not authorized or licensed to use the WATERPLAY mark. Furthermore,
Respondent’s WHOIS information, as well as other information in the record, including
Respondent’s failure to respond, does not suggest that Respondent is commonly
known by the <waterplayfeatures.com>
domain name. Therefore, the Panel finds
that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704
(Nat. Arb. Forum Apr. 25, 2007) (“Respondent
is not commonly known by the <potterybarn.org> domain name, because the
WHOIS information lists ‘Kurt Fees’ as the registrant, and nothing else
suggests that respondent is commonly known by the domain name in dispute.”);
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. Both the fact that Respondent
declined to respond to Complainant’s charge and the fact that Respondent’s
operations suddenly ceased suggest that Respondent was not legitimately known
as <targetpills.com>.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Because Complainant and Respondent are competitors in the same highly specialized field, the Panel finds that Respondent registered the <waterplayfeatures.com> domain name primarily for the purpose of disrupting Complainant’s business, pursuant to Policy ¶ 4(b)(iii). See SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field); see also 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 using the <waterplayfeatures.com> domain name, which is confusingly similar to Complainant’s mark, to divert Internet users seeking Complainant’s water park products and services to a web site containing Respondent’s competing water park products and services. Therefore, Respondent is taking commercial advantage of the confusing similarity between Respondent’s domain name and the mark, and is profiting from the goodwill associated with the WATERPLAY mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under Policy ¶ 4(b)(iv). 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); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waterplayfeatures.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 28, 2007
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