Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Water Pik, Inc., Newport Beach, CA, USA ("Complainant") represented by Lisa A. Osman, of Dorsey & Whitney LLP. The Respondent is Nam K Kwon, Seoul, Korea ("Respondent").

The domain name at issue are "waterpik.net" and "waterpik.org" registered with Gabia, Inc.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 21, 2001; the Forum received a hard copy of the Complaint on February 20, 2001.

On February 22, 2001, Gabia, Inc. confirmed by e-mail to the Forum that the domain names "waterpik.net" and "waterpik.org" are registered with Gabia, Inc. and that the Respondent is the current registrant of the name. Gabia, Inc. has verified that Respondent is bound by the Gabia, 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 February 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 2001 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@waterpik.net and postmaster@waterpik.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 29, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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." 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 the Respondent.

The Complainant requests that the domain names be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

No response was filed.

Complainant is the exclusive owner in the United States of the distinctive mark WATER PIK for water filter units and filter cartridges and shower heads (registration Numbers 1088620; 978418). In addition, Complainant is the owner of the distinctive mark WATER PIK in South Korea and more than thirty other countries.

Respondent registered the domain names on November 13, 2000.

On February 7, 2001 Complainant sent a cease and desist letter to Respondent by e-mail and Federal Express. This cease and desist letter, as well as this complaint, was sent to Respondent in both Korean and English. Respondent did not respond to the cease and desist letter or the complaint.

On February 13, 2001 Respondent’s brother called Complainant’s counsel regarding this dispute. Respondent’s brother stressed that he could not speak for Respondent and was unable to state whether Respondent was interested in transferring the domain names. Respondent’s brother did not indicate any legitimate interest for which Respondent was using the domain names. Rather, Respondent’s brother indicated that Respondent hoped to become a distributor for Complainant.

There is no relationship between Complainant and Respondent. Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained any authorization to use the Complainant’s trademarks.

Respondent has made no use of the domain names in question. The websites connected to the domain names indicate that developed websites are "coming soon."

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Given that the domain name entirely includes Complainant's trademark, and that the only difference between the domain name and Complainant's trademark is the absence of a space character between the words water and pik, the Panel concludes that the domain name is identical to Complainant's trademark. See Coty Cosmetics Inc. v. Jaguar Ltd., AF 0416 (eResolution Oct. 24, 2000) (finding that the domain name <vanillafields.com> is identical in use to the registered Trademarks owned by Complainant).

Therefore, the Panel finds that Complainant has shown that the domain name is identical to a trademark in which it holds rights.

Nothing in the record suggests that Respondent has any legitimate interest in the domain name. Respondent is not connected to Complainant’s business in any way. Respondent is not licensed by Complainant to use the mark. Water Pik is a fanciful word and there is no suggestion that Respondent is commonly known by this fanciful mark. Policy ¶ 4(c)(ii).

Respondent has made no use of the domain names in question. The websites connected to the domain names indicate that developed websites are "coming soon." Based on the conversation between Respondent’s brother and Complainant, it appears as if Respondent registered the domain names in order to leverage Complainant into a distributorship agreement. Nevertheless, Respondent’s failure to use the domain names and failure to assert any legitimate interest in the domain names satisfies Complainant’s burden under Policy ¶ 4(a)(ii). See State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because the Respondent never submitted a response nor provided the panel with evidence to suggest otherwise).

As to the second requirement, the Panel is satisfied that the Respondent has no legitimate interest in the domain names.

In light of the notoriety of Complainant’s Water Pik marks, Respondent had actual or constructive knowledge of the famous marks at the time he registered the disputed domain names. Registration with actual or constructive knowledge of Complainant’s marks is evidence of bad faith. See Ty. Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it when registering the domain names).

Respondent has made no use of the domain names in question, other than to indicate that active websites are "coming soon." Given that the domain names are completely comprised of Complainant’s distinctive mark, any active use of the domain names by Respondent would create a false impression that Respondent and Complainant were connected. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is "inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant"); Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because "It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy").

In sum, the notoriety of Complainant’s Water Pik marks, Respondent’s lack of any connection to Complainant, Respondent’s failure to use the websites connected to the domain name, and Respondent’s failure to respond in this case all indicate opportunistic bad faith registration and use. See America Online, Inc. v. Xianfeng Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); London Metal Exch. Ltd. v. Hussain; D2000-1388 (WIPO Dec. 15, 2000) (finding that the "letters ‘lme’ are so obviously connected with a well-known entity that their very use by someone with no connection to Complainant suggests opportunistic bad faith"); America Online Inc. v. Shenzhen JZT Computer Software Co. Ltd, D2000-0809 (WIPO Sept. 6, 2000) (finding that "gameicq.com" and "gameicq.net" are obviously connected with services provided with the world-wide business of ICQ and the very use by someone with no connection with the product suggests opportunistic bad faith).

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain names, "waterpik.net" and "waterpik.org" be transferred from the Respondent to the Complainant.