The Complainant is Waterford Wedgwood plc., Kilbarry, Waterford, Ireland, represented by Patrick O’Donnel, Harris, Wiltshire & Grannis LLP, Washington, D.C., United States of America
The Respondent is Namia Limited, West Bay, Grand Cayman, United Kingdom of
Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <waterfordchina.com> is registered with Signature
Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2005. On February 8, 2005, the Center transmitted by email to Signature Domains, Inc. a request for registrar verification in connection with the domain name at issue. On February 15, 2004, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2005.
The Center appointed Kristiina Harenko as the sole
panelist in this matter on March 24, 2005. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
Waterford has registered with the United States Patent and Trademark Office its rights in the trademark WATERFORD. According to the extracts from trademark electronic search system of the United States Patent and Trademark Office the Complainant has registered several trademarks consisting of or including the word “Waterford” in multiple classes and in respect of multiple products. The Complainant has also registered the domain name <waterford.com> for its website.
The Respondent registered its domain name <waterfordchina.com>
on March 25, 2002.
5. Parties’ Contentions
A. Complainant
The Complainant is a recognized world leader in the manufacture and merchandizing of crystal, china and other fine tabletop items. The Complainant has used its main WATERFORD mark in commerce since 1951. The Complainant uses its name and trademark in connection with its famous Waterford China and other household goods such as porcelain, earthenware and beverage ware; stemware, barware, decanters and vases; flatware; mirrors; picture frames; electric lighting; candles; fresh flowers; and furniture. One major use of the WATERFORD mark is on Waterford’s website <waterford.com>.
a) Identity or Confusing Similarity
Respondent’s registered domain name <waterfordchina.com> is confusingly
similar to the Complainant’s mark. It differs from Complainant’s
mark only by virtue of the addition of the word “china” to Complainant’s
mark. Prior UDRP panels have determined that such a minor alteration to a Complainant’s
mark does not provide amnesty from “a finding of confusing similarity.”
The Complainant refers to America Online, Inc. v. Yeteck Communication, Inc.,
WIPO Case No. D2001-0055 (finding <aolsportbet.com>,
<aolcasino.com> confusingly similar to the AOL and AOL.COM trademarks;
Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Henry Chan,
WIPO Case No. D2004-0218 (finding Respondent’s
use of <costcofurniture.com> and <costcohome.com> confusingly similar
to Complainant’s mark COSTCO.COM). Respondent’s use of Complainant’s
mark, like the use in America Online, supra, is an “adaptation
of a recognized trademark in a Domain Name by” the addition of a word
(America Online, supra, WIPO Case No.
D2001-0055).
The Complainant points out that the added word in the present case describes
one of the products for which Waterford is most widely recognized. Indeed, “virtually
all users will associate” <waterfordchina.com> with Waterford China.
The Complainant refers in this context to Microsoft Corporation et al. v.
MS Networks, WIPO Case No. D2002-0647.
Respondent’s decision to attach the word “china” to Respondent’s
mark thus presents strong evidence that the sole purpose of the <waterfordchina.com>
domain name is to draw consumer interest by creating confusion with Waterford’s
mark and products. The Complainant refers also in this respect to the Microsoft
Corporation v. MSNetworks, WIPO Case No.
D2002-0647 noting harm created by “consumer confusion” and to
Brookfield Communications, Inc. v. West Coast Entm’t, 174 F3d 1036
(9th Cir. 1999) holding that initial interest confusion causes significant
injury even where no sale is consummated. According to the Complainant, the
evidence that Respondent registered the disputed domain name in bad faith further
supports a finding that Respondent sought to capitalize on Waterford’s
long-established and well-known mark. The Complainant’s contentions related
to bad faith registration are dealt with below in Section 5A(c).
b) Rights or Legitimate Interests
Examples of illegitimate interest in respect of the
use of the domain name include: a) that Respondent has no license to use the
disputed domain name; b) that Respondent is not known by the domain name; and
c) there is no connection between the Respondent’s business and the use
of the domain name (Microsoft, supra, WIPO
Case No. D2002-0647).
The Respondent, Namia Limited, is not affiliated with
Waterford in any way. In particular, Waterford has never given Namia Limited
any license or consent, express or implied, to use Complainant’s mark
in its domain name or in any other manner. To the best of the Complainant’s
knowledge, Namia Limited has never even requested permission to use Waterford’s
mark. In addition, Respondent is not using the domain name “in connection
with a bona fide offering of goods or services” or for “legitimate
noncommercial or fair use… without intent for commercial gain to misleadingly
divert customers[.]” (Policy, paragraph 4(c). As in Microsoft Corp.
v. Stoneybrook, WIPO Case No. D2000-1274,
Respondent here chose a famous mark to use in its domain name specifically to
drive traffic to its own website (Microsoft, supra,WIPO
Case No. D2000-1274, holding that Respondent had no legitimate interest
in the domain name used “misleadingly to divert users to what appears
to be its gambling site”).
Respondent’s website displays a list of brand
names and product descriptions which, when clicked on, in turn display lists
of websites which sell the merchandise- such as Waterford China –identified
on Respondent’s site. The website highlights not only Waterford China
but also Waterford Crystal, Waterford’s other signature product. In addition,
the site features Wedgwood China, another of the products manufactured by the
Waterford Wedgwood plc family of companies. Complainant has attached a print
out of Respondent’s website as of February 3, 2005. Respondent’s
site in fact has no function other than to “divert users” to other
websites, most of which sell either Waterford’s exact merchandise or competing
products, giving rise to the inference that Respondent constructed its site
in order “to share in revenues obtained from the diverted traffic,”
(Costco, supra, WIPO Case No. D2004-0218,
and/or to collect “click-through fees and to generate sales revenue “for
the sites to which users are diverted, Cancer Treatment Centers of America
Inc., (CTCA) v. Henry Chan, WIPO Case
No. D2003-0611. Like the Respondent in the CTCA case, Respondent
here “trades on the Complainant’s goodwill by misleading members
of the public to its sites and affirmatively seeks to confuse the Complainant’s
customers and others who… guess at or cannot recall exactly the URL of
the Complainant’s website.” (Id.; Complainant also refers
to Yahoo! Inc., et al. v. Henry Chan, FA0306000162050 National Arbitration
Forum (finding that “registration and use of …domain name incorporating
the complainants’ mark to redirect Internet traffic … was not legitimate
use”).
c) Registration and Use in Bad Faith
Among the factors the Policy cites as evidence of
bad faith registration and use is paragraph 4(b)(iv): “an intentional
attempt to attract, for commercial gain, Internet users … by creating
a likelihood of confusion with the complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of the website.” There is no
doubt that the addition of the word “china” to Complainant’s
mark creates confusion as to the “source, sponsorship, affiliation, or
endorsement” of <waterfordchina.com>. The Complainant refers to
its contentions in Section 5A(a) and to Microsoft, supra, WIPO
Case No. D2002-0647 (finding that registration of <msnetworks.com>
was an intentional attempt “to attract [users] … for commercial
gain … by creating a likelihood of confusion … as to the source,
sponsorship, affiliation or endorsement of the website”). Indeed, “consumers
[are] attracted to [Respondent’s] site by virtue of the confusing nature
of the domain name[.]” (Id). Respondent’s domain name clearly
relies on both its “confusing similarity with the Complainant’s
mark” and the fact that the domain name is “so obviously connected
with Complainant’s service mark and its services[.]” (Id).
The panel in the CTCA case determined that such obvious connection and
similarity, by its very use, “suggests opportunistic bad faith.”
CTCA, supra, WIPO Case No. D2003-0611
(internal quotation marks omitted). By employing a confusingly similar mark,
Respondent here captures users hoping to enter Complainant’s site and
trades on “the goodwill surrounding Complainant’s mark to redirect
users to websites unrelated to the Complainant[.] (Id). This constitutes
bad faith use. See also Microsoft, supra, WIPO
Case No. D2002-0647.
Similarly, UDRP panels have found bad faith in the
“plundering” of a legitimately registered mark by use of a confusingly
similar domain name that diverts users to an unrelated website. See Costco,
supra, WIPO Case No. D2004-0218, (finding,
inter alia, that use of <costcofurniture.com> and <costcohome.com>
evidences “an operation of plundering the reputation of well-known marks”).
Like the Respondent in Costco, supra, Respondent here is plundering Waterford’s
legitimately registered mark for its own illegitimate commercial gain.
According to the Complainant, there can be no doubt
that causing confusion regarding affiliation with Waterford’s mark is
the very purpose of Respondent’s use of the domain name <waterfordchina.com>.
Complainant’s WATERFORD mark is “well known internationally and
it is inconceivable that the Respondent was not aware of the Complainant’s
mark at the time it registered the domain name (See Microsoft, supra,
WIPO Case No. D2002-0647). Furthermore,
“Respondent is deemed to have constructive notice of the Complainant’s
… mark, the Respondent would have discovered the Complainant’s [
] mark upon performing a trademark search[ ].”At any rate, “failure
to perform a trademark search is evidence of bad faith”, CTCA, supra,
WIPO Case No. D2003-0611.
A former UDRP panel has found that “failure
to provide complete or accurate contact information for a domain name is indicative
of bad faith, Microsoft, supra, WIPO
Case No. D2002-0647. Complainant has attempted to contact Respondent. In
January 2005, Waterford’s attorney wrote to Respondent at both the postal
address and the e-mail address provided by the Whois lookup for the <waterfordchina.com>
domain name. Respondent never replied, suggesting that the contact information
provided by Respondent is either inaccurate or ineffective because the Respondent
does not respond to correspondence directed to it.
Although “[I]t is often quite difficult to actually
show bad faith with concrete evidence” where a “Complainant has
presented some evidence pointing in that direction, it is then incumbent upon
the Respondent” to rebut that evidence. CTCA, supra, WIPO
Case No. D2003-0611. Here, the deliberate use of a domain name comprised
of one of Waterford Wedgwood plc’s premier products and the WATERFORD
mark itself, specifically in order to divert Internet users to other websites
marketing competing merchandise, provides remarkably strong evidence of bad
faith.
d) Remedy Requested
The Complainant requests that the domain name <waterfordchina.com> be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Pursuant to the Policy, Complainant must convince the Panel on the following three criteria:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name was registered and used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “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 as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
The dominant part of the domain name <waterfordchina.com> comprises the word “waterford”, which is identical to the registered trademark WATERFORD, which has been registered by the Complainant as a trademark in the United States in multiple classes and in respect of multiple products. The Panel concludes that the Complainant, as registered proprietor of those marks, has established rights in a trademark, sufficient for the purposes of paragraph 4(a) of the Rules. The addition of “china” to Complainant’s trademark WATERFORD does not overshadow the impact on observers of the element “waterford” as the dominant part and as the element that indicates a connection to the Complainant. The addition of the word “china” rather strengthens the impression that it is a domain name of the Complainant, since Waterford China is one of the signature products manufactured by the Waterford Wedgwood plc family of companies. Consequently, the disputed domain name, <waterfordchina.com>, is found to be confusingly similar to Complainant’s registered trademark WATERFORD.
B. Rights or Legitimate Interests
The Respondent is not affiliated with Waterford in any way. The Respondent does not have any license to use the WATERFORD trademark, nor is he a representative of the Complainant.
The Policy indicates that a registrant may have a legitimate interest in a domain name if it was making use of the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The Respondent is in default and thus has made no affirmative attempt to show legitimate rights and interests in the domain name. The arguments by the Complainant, as summarized hereinabove under 5A(b), supported by means of proof submitted by the Complainant, have convinced the Administrative Panel that the Respondent has not had, nor has, any rights or legitimate interests in respect of the domain name <waterfordchina.com>.
C. Registered and Used in Bad Faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4(a)(iii) of the Policy to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and has used it in bad faith. The Complainant has made several submissions in relation to this point (please refer to the Complainant’s contentions under Section 5A(c) of this Decision), the strongest of which is the claim that the Respondent is using the domain name to attract visitors to its site, as a result of consumer confusion.
This claim is based on the bad faith exemplar scenario outlined in paragraph 4(b)(iv) of the Policy, which reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
…
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of you website or location or of a product or service on your website or location.”
This paragraph applies to this case. The addition of the word “china” to Complainant’s mark WATERFORD creates confusion as to the “source, sponsorship, affiliation, or endorsement” of the domain name <waterfordchina.com>. The disputed domain name clearly relies on both its confusing similarity with the Complainant’s mark and the fact that the domain name is so obviously connected with Complainant’s trademark and its products, that the domain name by its very use suggests opportunistic bad faith. By employing a confusingly similar mark, Respondent captures users hoping to enter Complainant’s site and trade on the goodwill surrounding Complainant’s mark to redirect users to websites unrelated to the Complainant. This activity falls clearly into the exemplar of bad faith use and registration requirements of paragraph 4(b)(iv) of the Policy.
The Administrative Panel finds that the “www.waterfordchina.com”
pages linked to the “www.waterford.com” website may create a likelihood
of confusion as to source, sponsorship, affiliation or association, and there
is sufficient evidence to support a finding that Respondent violated paragraph
4(b)(iv) of the Policy. Accordingly, the Panel finds that Respondent has registered
and is using the domain name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <waterfordchina.com> be transferred to the Complainant.
Kristiina Harenko
Sole Panelist
Dated: April 7, 2005
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