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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AQUAQUEEN International Pty Ltd v. Caroldean Ross / Caroldean El Paseo

Case No. D2008-1971

1. The Parties

The Complainant is AQUAQUEEN International Pty Ltd, of Botany, New South Wales, Australia, represented internally.

The Respondent is Caroldean Ross / Caroldean El Paseo, of Palm Desert, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <aquaqeen.com>, <aquaqueen.info> and <aquaqueen.net> are registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

On December 22, 2008, the Complaint was filed by facsimile with the WIPO Arbitration and Mediation Center (the “Center”) pursuant to the Uniform Domain Name Dispute Resolution Policy (the “Policy") adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999.

On December 24, 2008, in response to a Request for Registrar Verification from the Center, to the Registrar confirmed inter alia that the said registration was registered by the Registrar and that the Respondent was the registrant of the domain names. The Registrar provided details of the administrative contact and billing contact for the registrations and confirmed that the language of the Service Agreement was English.

On January 7, 2009, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent, including the domain name registrant, the administrative contact, the technical contact, zone contact and billing contact by courier (Complaint with enclosures), facsimile (Complaint without attachments), and by email (Complaint without attachments). Copies of said Notification were sent to the Complainant and the Registrar by email.

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondent that the Administrative Proceedings had commenced on January 7, 2009, and that the Respondent was required to submit a Response to the Center on or before January 27, 2009.

On January 19, 2009, the Respondent’s representative requested an extension of time within which to file a Response.

On January 29, 2009, the Complainant submitted supplemental corrections of clerical errors in the Complaint. The Center acknowledged receipt of same on the same date. A copy of said acknowledgement was sent to the Respondents by the Center.

No formal Response was received by the Center but the Respondent’s representative engaged in email correspondence with the Center and the Complainant setting out the Respondent’s position in relation to the dispute. The email correspondence included inter alia an informal Supplemental Filing, submitted to the Center by email, copied to the Complainant, on January 29, 2009, of which the Center acknowledged receipt on January 30, 2009.

On February 2, 2009, the Complainant submitted a further Supplemental Filing by email.

On February 3, 2009, having received a Statement of Acceptance and Declaration of Impartiality from James Bridgeman, the Center proceeded to appoint this Administrative Panel consisting of a single member.

On the same date, the Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Parties and the case file was transferred to this Administrative Panel.

In the view of this Administrative Panel, proper procedures were followed and this Administrative Panel was properly constituted.

4. Factual Background

The Complainant was incorporated in New South Wales, Australia on August 14, 2000.

The Complainant is the owner of a portfolio of trademark registrations for the AQUAQUEEN trademark in Australia, Singapore, Japan, Hong Kong, the Republic of Korea, the United States, the European Community and China including:

Australian registered trademark AQUAQUEEN, number 635723, registered on July 22, 1994 for “water including mineral water” in class 32; and

United States of America trademark AQUAQUEEN, registration number 3,335,523, registered on November 13, 2007, with a stated priority date of October 19, 2006, for water in class 32 and toiletries and cosmetics in class 3.

In 2001, the Complainant registered the domain names <aquaqueen.com> and <aquaqueen.com.au>.

According to the Whois print-outs, submitted with the Complaint, the disputed domain names were registered as follows:

- <aquaqeen.com> was registered on February 16, 2008, the registrant is Caroldean El Paseo;

- <aquaqueen.net> was registered on February 19, 2008, the registrant is Caroldean El Paseo; and

- <aquaqueen.info> was registered on February 20, 2008, the registrant is Caroldean Ross.

In response to the Center’s verification enquiry, the Registrar stated that Caroldean El Paseo is the registrant of the three domain names.

In the absence of any Response there is little reliable information available in relation to the Respondent or her businesses.

For convenience the Panel will treat Caroldean Ross and Caroldean El Paseo collectively as a single Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant, having its principal place of business in the State of New South Wales, Australia, has been engaged in the business of supplying bottled spring water and similar water products since 1992.

The Complainant submits that it initially used the brand name AQUARIAN. It changed its name to AQUAQUEEN in 1994 following a trademark dispute with the Coca Cola Company which had alleged a conflict with its registered trademark AQUARIUS.

The original name AQUARIAN had been adopted because the principal in the business was born under the astrological star sign Aquarius and it was deemed apt to adopt the name as it signifies a water carrier.

The new name AQUAQUEEN was adopted because it was deemed apt, the principal of the Complainant’s business being a lady. The Complainant had also been advised that the name change from AQUARIAN to AQUAQUEEN would be of little significance in Japan. The Complainant was advised that to Japanese consumers the word change would have little significance once the logo and packaging remained unchanged.

Since 1994 the Complainant has marketed and sold its products under the AQUAQUEEN mark and over that period the Complainant has built a significant goodwill in the use of the mark in trade in the Australian and certain overseas markets including Japan.

The Complainant relies both on its rights at common law in the AQUAQUEEN trademark and on the above referenced registrations for the AQUAQUEEN trademark.

The Complainant submits that the domain names at issue are identical or confusingly similar to the Complainant’s AQUAQUEEN trademark. It is generally accepted that the addition of the gTLD extensions “.com”, “.net” and “.info” can be ignored for the purposes of comparison (citing inter alia VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607 and Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Complainant submits that the domain names <aquaqueen.net> and <aquaqueen.info> are identical to its AQUAQUEEN trademark.

Addressing the similarity of the <aquaqeen.com> domain name with the AQUAQUEEN mark, the Complainant submits that the domain name was registered with the intention of imitating the Complainant’s mark. The only difference between the mark and the domain name being the missing letter “u” and there is no English language word “qeen”.

The Complainant submits that the Respondent has no rights or legitimate interest in the domain names. The Complainant has no relationship whatsoever with the Respondent and has never authorized the Respondent to use the AQUAQUEEN trademark.

There is no evidence of the Respondent’s use or any demonstrable preparation to use the domain names in connection with any bona fide offering of goods or services before or after the registration of the domain names.

The Respondent has used the domain name <aquaqueen.net> to resolve to a website promoting goods described as “Kangen water” and “Kangen water machine”.

The <aquaqueen.info> domain name re-directs Internet users to another website with has a copyright legend “mykangenpower.com” offering some kind of pyramid distribution scheme for distributing goods and services in connection with “Enagic water machine”.

The Complainant has submitted print outs of said websites and states that the goods so promoted by the Respondent have no connection with the Complainant.

From the photographs on the Respondent’s websites, it would appear that the Kangen water machine and the Enagic water machine are identical.

The Complainant submits that these products are in direct competition with the Complainant’s AQUAQUEEN products.

After registration, the Respondent left the domain name <aquaqeen.com> to resolve to the Registrar’s parking page. On or about October 7, 2008, the Complainant notified the Registrar that the Respondent was infringing the Complainant’s trademark and the domain name was re-directed to resolve to a static page stating: “Sorry this site is currently not available.”

The Respondent can have no practical use for the <aquaqeen.com> domain name. It is a misspelling of the Complainant’s mark and while Internet users may accidentally make a typing error, the logical chance of that happening is not high.

The Respondent is not commonly known by any of the three domain names at issue.

Caroldean El Paseo is the name of a retail shop in El Paseo, Palm Desert, California.

The Complainant has submitted print outs of website content that state that Caroldean Ross is a lady residing in Palm Desert, California, who is inter alia a partner of “The Triple 7 Group” (event organizers), the owner of the above retail shop and a fashion coordinator.

Furthermore the Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of he disputed domains, without intent for commercial gain, misleadingly to divert consumers or to tarnish the trademark and service mark at issue.

The Complainant submits that the domain names were registered and are being used in bad faith.

The Complainant submits that the registration of the domain names that are identical or confusingly similar to the Complainant’s AQUAQUEEN trademark, fourteen years after the Complainant’s first use, cannot be regarded as coincidental.

Any Internet search carried out by the Respondent prior to registration of the domain names would have disclosed the Complainant’s registration of the <aquaqueen.com> domain name and the Complainant’s rights in the AQUAQUEEN mark.

The Respondent registered the <aquaqueen.net> and <aquaqueen.info> to promote the KANGEN and ENAGIC ranges of products that are directly in competition with the Complainant’s AQUAQUEEN products. The Respondent has used those domain names to publish biased and falsified information to discredit the Complainant’s products in order to promote the Respondent’s range of products. The intention is to disrupt the business of the Complainant being a competitor for commercial gain.

The Respondent registered the domain names primarily for the purposes of attracting, for commercial gain, Internet users, who are seeking the Complainant and are potentially customer’s of the Complainant, by creating a likelihood of confusion with the Complainant’s AQUAQUEEN mark as to the affiliation or endorsement of the Respondent’s websites or locations or products and services advertised on Respondent’s websites or locations. If the Respondent wished to promote her competing products she could have chosen to register the words “Kangen Water” or “Enagic Machine” or similar words as her domain names.

The Complainant contacted the Respondent regarding the domain names prior to commencing these proceedings. At first, the Respondent agreed to relinquish the use of the domain names and admitted use of the Complainant’s trademark for a “water ionizer”, which the Respondent quickly defended by stating that the domain names were not in conflict with the Complainant’s rights and expressed a willingness to transfer the domain names to the Complainant. The Respondent also stated that she wished to be compensated for her out of pocket expenses in registering the domain names with the Registrar.

However in three letters of demand, sent by the Complainant to the Respondent, it was made clear to the Respondent that the Complainant would not pay more than USD 500.00 in respect of the Respondent’s estimated out of pocket expenses, the Respondent ceased communication and was not contactable. The telephone and fax numbers published in the Registrar’s Whois directory each connected to with recorded messages stating the numbers were not in service and had been disconnected. The Respondent’s behaviour demonstrates the Respondent’s intention of acquiring the disputed domain names for one of the primary purposes of selling or transferring the domain names to the owner of the trademark, namely the Complainant, or a competitor of the Complainant for valuable consideration in excess of that offered by the Complainant in their communications.

By using the domain names to promote competing products, the Respondent has prevented the Complainant from reflecting the AQUAQUEEN mark in a corresponding domain name.

The “.net” domain is associated with Internet networks and the “.info” domain is associated with information on the Internet. The choice of these domains are inappropriate for the promotion of commercial products. This indicates that the Respondent first attempted to register the domain name <aquaqueen.com> but failed because of the Complainant’s prior registration.

The fact that the Respondent registered three names within a one week period in February 2008, while not sufficient to establish a pattern of conduct, suggests that the Respondent knew of the Complainant’s marks, and that the domain names at issue have been registered in bad faith (citing Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010).

It is apparent that the Respondent is not concerned about the likelihood of confusion with the Complainant’s mark. In normal circumstances people in business are concerned to avoid such confusion.

B. Respondent

While no formal Response was filed, it would appear from email correspondence on file including the inter partes email correspondence between the Respondent’s representative and Complainant’s representative, dated January 16, 2009, that the Respondent’s position is as follows:

- the Complainant had not taken any steps to ensure ownership of the domain names at the time that they were registered by the Respondent;

- the Respondent had no reason to believe that the domain names were not available for the Respondent or any other entity to register them;

- the Respondent has been unable to find any presence of the Complainant’s business activity outside Australia;

- there are several entities using the name “Aqua Queen” some of which pre-date the Complainant’s use of the term, including litigation in 1966 in relation to the trademark AQUA QUEEN;

- due to her work and interest in fashion, the Respondent has become known as “Queen of Cool.

On January 19, 2009, the Respondent’s representative stated that the Respondent did not “drop out of sight” as the Complainant had implied. In the same email the Respondent’s representative requested that the Complainant suspend the Complaint to allow the Respondent to transfer the domain names to the Complainant.

On January 20, 2009, the Respondent’s representative sent an email to the Complainant inter alia stating that:

- the Complainant’s trademark includes a drawing and that image has not been used by the Respondent;

- the Respondent had no knowledge of the Complainant’s trademark when she registered the domain names;

- the Respondent is unable to take any steps to transfer the domain names so long as the Complaint is in progress as the registration is locked;

- the Respondent has never used the Complainant’s trademark.

In a further email from the Respondent’s representative dated January 21, 2009, it was stated inter alia that the Respondent “… continues, however unsuccessfully, to remove her website and transfer the disputed domain names. GoDaddy.com has refused to allow this citing the actions of Aquaqueen …” and proceeded to state that the Complainant has refused to accept the Respondent’s reasonable offer to settle this dispute.

On January 29, 2009, the Respondent’s representative sent a further email stating inter alia that the Respondent is not in a position to file a formal Response and reiterating the Respondents position as described above.

6. Discussion and Findings

Preliminary Issue

The Complainant submitted Supplemental Filings on January 29, 2009 and on February 2, 2009. In the absence of any Response and because further evidence is not required for the Complainant to succeed, this Panel has exercised its discretion and decided not to admit these Supplemental Filings.

Substantive Issues

Paragraph 4(a) of the Policy places on the Complainants the onus of proving that:

(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

The Complainant has provided convincing evidence of its rights in the AQUAQUEEN trademark both through its ownership of the above referenced trademark registrations and at common law though its long use of the mark in connection with the sale of bottled water.

This Panel accepts the Complainant’s submissions that the domain names at issue are identical and confusingly similar to the Complainant’s trademark. The domain names <aquaqueen.net> and <aquaqueen.info> are identical to the Complainant’s trademark. The gTLD extensions “.com”, “.net” and “.info” can be ignored for the purposes of comparison and the domain name <aquaqeen.com> is confusingly similar to the AQUAQUEEN mark, there being only one letter “u” in the difference.

The Complainant has succeeded in proving the first element of the test in paragraph 4(a) of the Policy.

The Complainant is the registered owner of the AQUAQUEEN trademark for “water” in the United States where the Respondent resides. The Respondent is using the domain names for the purposes of marketing products related to water ionisation. There is no commercial relationship between the Complainant and the Respondent. The Respondent has never been given permission or licence to use the Complainant’s trademark for the purposes of registering domain names or otherwise.

Furthermore the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the domain names at issue. In those circumstances the onus of proof shifts to the Respondent. The Respondent has had ample opportunity to file a formal Response but it has chosen not to do so. In lengthy email correspondence from the Respondent’s representative with the Center and the Complainant that has been furnished as part of the file, the Respondent has not provided any evidence that she has rights or legitimate interest in the domain names.

The Complainant has therefore also succeeded in proving the second element of the test in paragraph 4(a) of the Policy.

The Respondent has caused two of the domain names at issue, that are identical to the Complainant’s AQUAQUEEN trademark, to resolve to websites that promote products that compete with the Complainant’s products. Such use is not bona fide use.

This Panel accepts the Complainant’s argument that the Respondent must have had actual knowledge of the Complainant’s business when she registered the disputed domain names. The Respondent first registered the <aquaqeen.com> on February 16, 2008. Within a week she then registered the domain names <aquaqueen.net> and <aquaqueen.info>. On the balance of probabilities the Respondent chose to register the domain names in order to create confusion with the Complainant’s domain name and the name of the Complainant’s AQUAQUEEN branded products.

The Respondent has not provided any alternative plausible explanation as to why she chose and registered these particular domain names.

The Respondent allowed the <aquaqeen.com> domain name to remain parked on the Registrar’s site and arranged or allowed the <aquaqueen.net> and <aquaqueen.info> domain names to resolve to websites that offer products that the Complainant submits are in direct competition with the Complainant’s products. While this Panel is not convinced that the products directly compete with the Complainant’s bottled water, there is certainly the risk of an association in the mind of consumers between bottled water and water ionizing machines.

The Respondent’s position that she was willing to transfer the domain names upon payment of her reasonable out of pocket expenses is implausible. From the manner in which the Respondent engaged with the process, by arguing her case through her representative in a series or emails rather than filing a Response, and the content of the email exchange, this Panel has inferred that the Respondent is disingenuous in claiming to be willing to transfer the disputed domain names.

The manner in which the Respondent is using the <aquaqueen.net> and <aquaqueen.info> domain names leads this Panel to conclude that by using these domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to her websites, by creating a likelihood of confusion with the Complainant's AQUAQUEEN mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or the competing products promoted on those websites.

From the manner in which the Respondent engaged in negotiations with the Complainant in relation to the request for payment of her expenses in return for the transfer of the domain names, it would also appear on the balance of probabilities that the Respondent registered each of the disputed domain names, primarily for the purpose of selling, renting, or otherwise transferring each of those domain name registrations to the Complainant who is the owner of the AQUAQUEEN trademark or to a competitor of the Complainant, for valuable consideration in excess of her documented out-of-pocket costs directly related to the domain names.

It is noteworthy that the Respondent has arranged for the <aquaqueen.net> and <aquaqueen.info> domain names to resolve to websites that purport to promote commercial products. Despite her claim to be willing to transfer the domain names to the Complainant in return for her out of pocket expenses, she has not taken any steps to terminate the use of the domain names as the address of those websites. Such contradictory behaviour on the part of the Respondent affirms this Panel in reaching the decision that the Respondent registered and is using the domain names in bad faith.

The Complainant has therefore also succeeded in proving the third and final element of the test in paragraph 4(a) of the Policy and is entitled to succeed in its application.

7. Decision

With specific reference to paragraphs 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel directs that the domain names <aquaqeen.com>, <aquaqueen.info> and <aquaqueen.net> be transferred to the Complainant.

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James Bridgeman
Sole Panelist

Dated: February 15, 2009