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Jacuzzi UK Group PLC v. WHOIS Privacy Protection Service Inc. [2004] GENDND 595 (14 May 2004)

1. The Parties

The Complainant is Jacuzzi UK Group Plc, Bradford, United Kingdom of Great Britain and Northern Ireland, represented by Pinsents, United Kingdom of Great Britain and Northern Ireland.

The Respondent is WHOIS Privacy Protection Service Inc., Bellevue, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <astracast.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 2, 2004. On April 6, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On April 7, 2004, eNom 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, billing, 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 April 8, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2004.

The Center appointed Peter G. Nitter as the sole panelist in this matter on May 7, 2004. 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

The Complainant is engaged in the manufacture and sales of kitchen sinks, taps and related accessories under the trade mark ASTRACAST. In 2003, sales of such products by reference to the ASTRACAST brand were approximately £7,000,000. Complainant is the proprietor of a number of trade mark registrations for ASTRACAST in the UK and EU.

Respondent has registered the domain name at issue, <astracast.com>.

5. Parties' Contentions

A. Complainant

The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

Panel decisions have held in the past that registrations of trade marks are prima facie evidence of validity of the said trade mark registrations, which creates a refutable presumption that the registrations are inherently distinctive, and the respondent has the burden of refuting this assumption, see Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc, WIPO Case No. D2000-0047.

The domain name at issue is essentially identical to Complainant's trade mark registration, the .com suffix being purely descriptive of the Domain Registrar. It was held in the Panel decision, Avnet, Inc. v. Richard J. Rosenberg, WIPO Case No. DTV2001-0016, that the addition of the phrase ".com" is non-distinctive because it is a gTLD required for registration of a domain. Further, numerous courts and prior Panel decisions have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered marks, see Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253.

The Respondent has no rights or legitimate interests in respect of the domain name.

The Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, the only presence at the Internet web site corresponding to the domain name at issue currently being a search engine which includes various links to other kitchen sink suppliers. Previously, the domain name hosted a site entitled "Astracast Webhosting CO. Limited". This site was stated to be "under development" and the Complainant is not aware of any bona fide services ever having been offered.

The domain name at issue does not reflect the Registrant's name, WHOIS Privacy Protection Service Inc or Birgit Klosterman, or any corporate entity to which the Complainant is aware that the Respondent is connected. The Complainant notes the reference above to "Astracast Webhosting Co. Limited" but does not believe that the Respondent was commonly known by that name and a GOOGLE search for "astracast webhosting" produced no hits.

The domain name at issue is being used to host a search engine which includes links to various retail outlets which are potential customers of the Complainant and where competitor brands are listed. The Domain Name is thus being used to misleadingly divert consumers.

In light of the above-mentioned circumstances, Complainant asserts that it has prima facie shown that none of the three circumstances establishing legitimate interests or rights apply to the Respondent and consequently in accordance with the findings of Avnet, Inc v. Richard J Rosenberg, WIPO Case No. DTV2001-0016, the burden of the production of such legitimate interests shifts to the Respondent. If the Respondent does not respond to this Compliant, the Panel must assume that it has no legitimate interests in the contested domain name.

The domain name was registered and is being used in bad faith.

The disputed domain name was previously registered by the Complainant, but due to an error, the registration expired in March 2003. Shortly thereafter the disputed domain name was registered by an individual in Hong Kong.

A subsequent search has shown details for that individual as being the registered owner of the domain name <mymylink.com>, and the website corresponding to this domain name appears to be very similar to the website corresponding to the disputed domain name. Also the "properties" sections of <astracast.com> and <mymylink.com> both refer to the website "www.landing.domainsponsor.com", and the two therefore appear to be related.

The email contact details of the prior owner of the domain name are the same email contact details used by Birgit Klosterman. Complainant asserts that the true current owner of the disputed domain name is a Birgit Klosterman, and that WHOIS Privacy Protection Service Inc. is, as its very name suggests, simply being used as a tool by the current owner to disguise their identity.

Assuming that Birgit Klosterman remains the actual owner of the disputed domain name, Complainant refers to the Panel decision Cars 4 Causes and Rose Lee v. Birgit Klosterman, (CPR Case No. 0317-031024) under which Birgit Klosterman was ordered to transfer the disputed domain name to the complainant. In that case, the disputed domain name was also used to host a search engine displaying "popular" providers of services similar to the complainants and shows a history of bad faith registrations by the likely registrant of the contested domain name.

The Complainant has contacted Respondent several times and requested that it be returned to Complainant. In response, Complainant has received requests for payments ranging from USD 3,000 to a sum likely in excess of USD 3,800 for the transfer of the domain name at issue.

In light of these requests for payment, Complainant contends that it is clear that the domain name was registered with a view to obtaining valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the domain name.

The website corresponding to the domain name at issue includes links to various sink/bathroom manufactures and retailers, which are not affiliated to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has evidenced that it is the proprietor of the trade mark ASTRACAST.

In accordance with established precedent under the UDRP, the Panel considers that the suffix ".com" does not influence on the consideration of identity or similarity, and the Panel therefore finds that the domain name at issue is identical to Complainant's trade mark.

B. Rights or Legitimate Interests

The Panel has considered Complainant's allegation that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue. Since Respondent is in default, these allegations have not been contested.

Because it is generally difficult for Complainant to prove the fact that Respondent does not have any rights or legitimate interests in the domain name at issue, while Respondent at the same time is given ample opportunity to demonstrate any such rights or legitimate interests pursuant to paragraph 4(c) of the Policy, Previous decisions under the UDRP have found it sufficient for Complainant to make a prima facie showing of its assertion.

The Panel finds that the circumstances mentioned and evidenced by Complainant is sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the domain name at issue.

As Respondent has not demonstrated any of the three circumstances that constitute rights to or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent does not have any rights or legitimate interests in respect of the domain name at issue.

C. Registered and Used in Bad Faith

The Panel has considered Complainants' assertions and evidence with regard to the Respondent's registration and use of the domain name in bad faith. By not submitting a response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name at issue in bad faith.

The Panel accepts the Complainant's assertion that the Respondent's registration of a domain name identical to the trade mark of the Complainant is an attempt to intentionally divert customers to its web site for financial gain. The fact that the Internet web site corresponding to the domain name at issue includes various links to other kitchen sink suppliers indicates that Respondent is aware of Complainant's trade mark, and intends to take advantage of it.

The Panel furthermore finds that Respondent has made offers to sell the domain name at issue to Complainant for value in excess of Respondent's costs, and that it is likely that such sale was Respondent's purpose when registering the contested domain name.

As a result of the circumstances evidenced by Complainant, such as the similarity between the website corresponding to the domain name <mymylink.com> and the website corresponding to the domain name at issue, and the identical e-mail addresses of the previuos registrant and Ms. Birgit Klosterman, the Panel furthermore finds it evidenced that the true current owner of the disputed domain name is in fact Ms. Birgit Klosterman. Ms. Klosterman has previously been found to be involved in the registration of domain names in bad faith, see Cars 4 Causes And Rose Lee v. Birgit Klosterman, (CPR Case No. 0317 - 031024), and the Panel sees this as a further indication of 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, <astracast.com> be transferred to the Complainant.

Peter G. Nitter
Sole Panelist

Dated: May 14, 2004