DECISION

Wave Industries, Inc. v. Angler Supply

Claim Number: FA0407000304784

PARTIES

Complainant is Wave Industries, Inc. (“Complainant”), represented by John A. Thomas of Glast, Phillips & Murray, P.C., 13355 Noel Road, Suite 2200, Dallas, TX 75240.  Respondent is Angler Supply (“Respondent”), represented by Douglas M. Isenberg of Needle & Rosenberg, P.C., 999 Peachtree Street, Suite 1000, Atlanta, GA 30309-3915.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <wavebaits.com> and <waveworms.com>, registered with Go Daddy Software, Inc.

PANEL

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.

Jacques A. Léger Q.C. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 27, 2004; the Forum received a hard copy of the Complaint on July 28, 2004.

On August 2, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <wavebaits.com> and <waveworms.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 August 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 24, 2004 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@wavebaits.com and postmaster@waveworms.com by e-mail.

A timely Response was received and determined to be complete on August 24, 2004.

A timely Additional Submission was received from Complainant on August 30, 2004.

On September 1, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jacques A. Léger Q.C. as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Trademark information

Complainant alleges it has been using the WAVE and WAVE WORMS since February 2001.

Complainant contends that it has spent at least $400,000 since that time advertising and promoting its lures and the WAVE marks.

Complainant alleges that it has sponsored four professional fishermen who travel the United States fishing in tournaments and displaying the WAVE marks.

Complainant’s lures are sold throughout the United States by retailers, such as Academy Sports and Walmart, in the latter case, at more than 3,000 Walmart stores.

Complainant has applied for U.S Federal Trademark Registration for its WAVE mark.  This application is now pending in the U.S. Trademark Office under Serial Number 76/435,681.

Complainant is the owner of U.S. Federal Trademark Registration Nos. 2,785,756 for TIKI and 2,814,838 for the TIKI-MAN design.

Factual Background

Complainant is in the business of making and selling fishing lures, particularly lures of the soft-body or plastic-worm type.

Respondent registered the domain names <waveworms.com> on February 6, 2003 and <wavebaits.com> on February 24, 2003.

Identical or confusingly similar

The domain names registered by Respondent are confusingly similar to Complainant’s WAVE and WAVE WORMS marks, because they literally incorporate the distinctive portion of Complainant’s trademarks.

In the case of the <waveworms.com> domain, the domain name and the WAVE WORMS mark are identical.

In the case of the <wavebaits.com> domain, Respondent has incorporated the distinctive portion of Complainant’s WAVE mark into a combination adding only the word “baits.”

The likelihood of confusion is high where the portion common to both the mark and the domain is inherent distinctiveness, but the additional portion, “baits,” is descriptive or generic.

Respondent uses the <wavebaits.com> domain name in the text of the same web page in exactly the same color and font as the Complainant’s registered trademark of the Tiki-Man fisherman.

Rights and legitimate Interests

The web page returned from the <waveworms.com> domain name is ostensibly a discussion for Internet “worms” and viruses. This page contains a prominent banner at the top using Complainant’s marks and color scheme asking the user to “click here [If] you’re looking to purchase WAVE WORMS. This link takes the user directly to the <wavebaits.com> website, not to Complainant’s website, as a reasonable user might suppose.

When the user arrives at the <wavebaits.com> site, he is presented with a prominent graphic, again using Complainant’s TIKI-MAN mark.

It is plain that Respondent is using Complainant’s WAVE and WAVE WORMS marks in its domain name to deceive consumers and lure them to the online store Respondent Angler Supply, Inc.

Bad Faith

Respondent has clearly intentionally attempted to attract, for commercial gain, Internet users to its websites, and in particular, the online store at <usangler.com>, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.

Respondent necessarily knew of Complainant and its trademarks before creating its websites at the offending domain names, else he would not be selling Complainant’s products.

B. Respondent

Identical or confusingly similar

Complainant apparently does not own any trademark registrations for either WAVE WORMS or WAVE BAITS, as Complainant fails to cite any such registrations in the Complaint.

Although Complainant states that it has applied for Federal registrations in the United States for the WAVE mark (no. 76/435,681), this application is not evidence of any rights that Complainant may have in the WAVE mark.

“Wave” is a common term for use in connection with fishing lures.

Therefore, “Wave” is not a distinctive term for use in describing fishing equipment, Complainant’s application may not mature into a registration, and Complainant cannot claim any exclusive rights to use the term “Wave.”

Respondent is using the domain name in connection with a website that provides information about, and sells services related to, “The Next Wave of Worms” on the Internet (that is, disruptive computer programs), not in connection with services offered by Complainant.  Although Respondent’s website using the <waveworms.com> domain name previously carried an advertisement allowing visitors to purchase Complainant’s products, Respondent eliminated this advertisement after becoming aware that Complainant considered the advertisement to create confusion.

Rights and legitimate Interests

Respondent is making a legitimate noncommercial or fair use of each of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

With respect to the <waveworms.com> domain name, Respondent is using the domain name in connection with a website that provides information about, and sells services related to, “The Next Wave of Worms” on the Internet (that is, disruptive computer programs), not in connection with services offered by Complainant.

With respect to the <wavebaits.com> domain name, Respondent is using the domain name to forward to its website at http://www.angler suplly.com/manufacturer.cfm?manufacturer=Wave%20Worms, where Respondent legally offers for sale, products manufactured by Complainant.  Further, because the term “Wave” is popularly used in connection with fishing lures and related products, Respondent has the right to use such a term in connection with its own attempts to sell such products.

Bad Faith

Respondent is using each of the domain names for its own commercial purposes and has not attempted to sell, rent or otherwise transfer registration of either of the domain names to Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to either of the domain names.

Complainant operates a website using the <wavefishing.com> domain name, which allows consumers to purchase Complainant’s products. Therefore, Respondent in using the disputed domain names does not prevent Complainant from reflecting the WAVE mark in a corresponding domain name.

Respondent has not registered either of the domain names for the purpose of disrupting the business of Complainant or of anyone else.

Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

C. Additional Submissions

Respondent attempts to argue that Complainant has no trademark rights in the WAVE and WAVE WORMS designations, because, first, the marks are not registered, and second, WAVE cannot be a distinctive term for fishing lures.  Both arguments are mistaken.

It is well established that unregistered common law trademark rights are entitled to protection, and that such marks can be the basis for a decision in favor of the Complainant in a domain name dispute under the UDRP.

Complainant has ample marks through long use and promotion.

FINDINGS

Having reviewed the evidence submitted by the parties and their written representations, the Panel makes the following findings:

- Complainant has rights in the WAVE and WAVE WORMS service marks.

- The <waveworms.com> domain name is identical to Complainant’s WAVE WORMS mark.

- As to <wavebaits.com>, it is neither identical nor confusingly similar to Complainant’s service marks.

- Complainant has satisfactorily met its burden to prove that Respondent has no rights or legitimate interest in the <waveworms.com> domain name.

- Respondent registered and used the <waveworms.com> domain name in bad faith.

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 Complainant must prove cumulatively each of the following three elements prior to obtaining an order that a domain name ought to 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.

Identical and/or Confusingly Similar

Complainant asserts that it has established rights in the WAVE mark by filing for a trademark registration with the United States Patent and Trademark Office (Ser. No. 76/435,681 filed July 30, 2002).  The Panel finds that an application for mark is not per se sufficient to establish rights to a trademark for the purposes of the UDRP, and therefore Complainant fails to establish rights in the terms WAVE and WAVE WORMS as a result thereof.  See Amsec Ent. v. McCall, D2001-0083 (WIPO Apr. 3, 2001) (stating that Complainant’s pending trademark applications do not establish an enforceable right to the mark until a trademark registration is issued (subject of course to common law trademark derived for use)); see also Razorbox, Inc. v. Torben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (Complainant did not establish the requisite trademark or common law rights to grant Complainant the necessary standing for the Panel to find in its favor as Complainant’s pending trademark application did not, in and of itself, demonstrate trademark rights in the mark applied for).  However, the Panel must then ensure whether or not Complainant has otherwise satisfactorily showed common law rights derived from its use of the WAVE and WAVE WORMS service marks, as UDRP proceedings are open to both registered or common law trademark.

In that regard, Complainant has argued that it has established common law rights in the WAVE and WAVE WORMS marks (“WAVE” marks), having asserted that it has used the marks continuously and extensively in commerce since February 2001 in association with its fishing lures.  Furthermore, Complainant contends that it has spent at least $400,000 in advertising its products under the WAVE marks through such mediums as national trade shows and sponsoring professional fishermen, and this evidence has not been contradicted nor challenged by Respondent.  The Panel finds that Complainant has satisfactorily established common law trademark through use.  See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (wherein common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).

Further, Complainant asserts that the <waveworms.com> domain name registered by Respondent is identical to Complainant’s WAVE WORMS mark because the domain name fully incorporates the mark, adding only the generic top-level domain (“gTLD”) “.com.”  The Panel concludes that the mere addition of a gTLD to Complainant’s mark is irrelevant and does not negate the indentical nature of the domain name.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (wherein the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). 

Therefore, the Panel finds that Complainant has satisfied its burden under Policy ¶ 4(a)(i) for the <waveworms.com> domain name.

However with respect to <wavebaits.com>, the Panel finds that Complainant has failed to satisfactorily meet its burden to show that it was either identical or confusingly similar to its WAVE marks, when considered as a domain name.  Complainant also raised the question as to whether or not a cache or metatag can be said to be an infringement of its trademark rights given that Respondent has redirected <wavebaits.com> to <anglersupply.com> which prominently display a graphic that includes Complainant’s registered TIKI mark and logo (Reg. No. 2,785,756 issued November 25, 2003 and Reg. No. 2,814,838 issued February 17, 2004).  In other words, Complainant attempts to assert that to a certain extent  <wavebaits.com> is indirectly confusing.  Notwithstanding the fact that this rises a fine legal point, the Panel concludes, that it lacks jurisdiction to address it within the limited scope of the ICANN rules and consequently will not address this question, reserving the rights of Complainant to deal with this matter in another jurisdiction, should it so elect.

Consequently, with respect to the <wavebaits.com> domain name, the Panel will refrain from commenting on the other elements, as Complainant’s has failed to meet its burden on the first element.

Rights or Legitimate Interests

Policy ¶ 4(a)(ii) inquires as to whether or not Respondent has any rights or legitimate interests vested in the domain name.  Policy ¶ 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests:  (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services;  (ii) the fact that Respondent has commonly been known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

The Panel finds that Respondent has no rights or legitimate interests in the <waveworms.com> domain name given there exists no relationship between Complainant and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the domain name. There is no evidence of any commercial relationship between Complainant and Respondent which would entitle Respondent to the marks.

In addition, Complainant asserts that Respondent is not commonly known by the <waveworms.com> domain name and was not commonly known by the domain name at the time Respondent registered the disputed domain names. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Furthermore, Complainant argues that the <waveworms.com> domain name resolves to a website that appears to be a discussion site for Internet worms and viruses.  However, Complainant asserts that the website contains a banner at the top of the page that is in Complainant’s colors and invites users to purchase WAVE WORMS.  The Panel concludes that Respondent’s use of the domain name to divert Internet users to a website advertising Complainant’s products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000).

Registration and Use in Bad Faith

Most of the time it is quite difficult, if not impossible, to actually show bad faith with concrete evidence, particularly given the limited scope of the inquiry in these proceedings; one should not expect to easily find “the smoking gun”.  While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be ascribed to bad faith.  The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration or the use of the disputed domain names relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, as the Panel finds it did in the present case, it is then incumbent upon Respondent to either justify or explain its business conduct (if not demonstrate the contrary).  Respondent is misplaced in relying on the defense of use of a generic term to prove a legitimate interest and lack of bad faith use and registration.  In particular, the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interest in the domain names and the domain names were registered or used in bad faith; and therefore the burden then shifted to Respondent to prove the opposite. However, the Panel believes Respondent has not met its burden for the following reason.

Further, Complainant asserts that Respondent is using the <waveworms.com> domain name to divert Internet users to Respondent’s commercial website for Respondent’s commercial gain.  The Panel agrees that, in the present circumstances, Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (stating that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Furthermore, Complainant contends that Respondent had actual or constructive knowledge of Complainant’s rights in its WAVE marks when Respondent registered the <waveworms.com> domain name, since the domain name diverts Internet users to websites, and the Panel so finds.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) (the Panel agrees that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for the <waveworms.com> domain name.

Accordingly, it is Ordered that the <waveworms.com> domain name be TRANSFERRED from Respondent to Complainant.

However, as for the <wavebaits.com> domain name, Complainant has failed to meet its requirements on a balance of probabilities as to the confusing similarity of the <wavebaits.com> domain name and Complainant’s WAVE mark, and therefore the Complaint relating to <wavebaits.com> is DENIED.

Jacques A. Léger Q.C., Panelist
Dated: September 20, 2004

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