7th Mar 2006

National Arbitration Forum

DECISION

Aquascape Designs, Inc. v. Vertical Axis, Inc c/o Domain Adminstrator

Claim Number: FA0601000629222

PARTIES

Complainant is Aquascape Designs, Inc., of the United States of America (“Complainant”), represented by Adesh Bhargava, of Dykema Gossett, PLLC, 1300 I Street, N.W., Suite 300 West, Washington, DC 20005. Respondent is Vertical Axis, Inc c/o Domain Adminstrator of Korea (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <aquascape.com>, registered with Nameview, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Honorable Timothy O’Leary, Steven L. Schwartz and Alan L. Limbury as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 20, 2006. On January 24, 2006, the National Arbitration Forum drew to Complainant’s attention certain formal deficiencies in the Complaint and Complainant amended the Complaint accordingly on January 25, 2006.

On January 24, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <aquascape.com> domain name is registered with Nameview, Inc. and that the Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 January 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 14, 2006 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@aquascape.com by e-mail.

A timely Response was received and determined to be complete on February 14, 2006.

A timely Additional Submission was received from Complainant on February 21, 2006 and was considered to be in accordance with The Forum’s Supplemental Rule #7.

On February 22, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Timothy O’Leary, Steven L. Schwartz and Alan L. Limbury as Panelists.

A timely Additional Submission was received from Respondent on February 27, 2006 and was considered to be in accordance with The Forum’s Supplemental Rule #7.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Since 1991 Complainant has provided water garden products and services throughout the United States and Canada and is now North America’s largest manufacturer and distributor of products used in the construction of residential water gardens and water features.

Complainant claims common law rights in the trademarks AQUASCAPE DESIGNS, AQUASCAPE DESIGNS, INC., and AQUASCAPE. In 1994 it obtained and subsequently allowed to lapse four Illinois State trademark registrations for the mark AQUASCAPE DESIGNS. On August 20, 2003 it registered the mark AQUASCAPE DESIGNS (& LOGO) in Canada (No. TMA587538). Since at least October 5, 1999, it has operated a website at www.aquascapedesigns.com.

Complainant says the disputed domain name aquascape.com, which Respondent registered on September 7, 2003, is identical to or confusingly similar to Complainant’s AQUASCAPE DESIGNS word and designs marks. 

Respondent has no rights or legitimate interests in the disputed domain name because it is not selling anything at its aquascape.com website that could be described by the word “aquascape”. Rather, it operates a directory portal that contains a series of hyperlinks for searchable categories in the water garden field, as well as direct links to water garden-related sites primarily featuring Complainant’s competitors, with limited reference to Complainant’s site. The site also generates pop-up advertisements. In any event, Complainant submits AQUASCAPE is a distinctive trademark rather than just a descriptive word that may be used merely in a descriptive sense in a fair use.

Respondent is not known by the domain name and was not authorized by Complainant to register it.

Respondent is using the domain name misleadingly to divert consumers searching for Complainant or its authorized affiliates to Respondent’s website and thereafter directing them to web sites that sell and offer for sale products and services in the water garden field that are not affiliated with Complainant.

Respondent registered and is using the disputed domain name in bad faith to attract consumers to its website based upon Complainant’s reputation and goodwill and to direct them to products unaffiliated with Complainant.

Respondent’s actions disrupt Complainant’s business by providing links to Complainant’s competitors, confusing consumers into thinking they are affiliated with or endorsed by Complainant.

Respondent has intentionally attempted to attract Internet users to its website for pop-up advertising revenue and to divert customers of Complainant by creating a likelihood of confusion with Complainant’s AQUASCAPE word and design marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

B. Respondent

Complainant has no enforceable rights under the Policy because “aquascape” is generic, short for “aquatic landscape.” It describes Complainant’s business: providing aquatic landscaping services. Complainant’s only registered mark is a Canadian mark for Aquascape Designs, registered only about two weeks before the disputed domain name. Complainant has not provided adequate proof of common law rights in “aquascape.”

Respondent has rights and a legitimate interest in the disputed domain name because it incorporates the generic term “aquascape,” which is used by numerous third parties who market, through their websites, the same services as Complainant. Mere registration of a generic term establishes Respondent’s legitimate interest. Further, Respondent hosts the disputed domain name on a web site that provides sponsored links (provided by Yahoo Search Marketing) related to aquatic sports, such as snorkeling, water skiing and boating. This bolsters its legitimate interest, based on a bona fide offering of advertising services.

Respondent denies bad faith registration or use and says it is impossible to prove bad faith registration because Respondent had no knowledge of Complainant’s business name or alleged mark when it registered the disputed domain name. It cannot be inferred that Respondent registered the disputed domain name with Complainant in mind, particularly having regard to the substantial third party use of the term “aquascape.” A factor weighing against a finding of bad faith is that Respondent registered the disputed domain name when it was deleted and became available for anyone to register. Registering a common generic word does not constitute bad faith.

In support of its contentions Respondent relies on an unsworn declaration by Chad Park, a manager of Respondent.

C. Additional Submissions

Complainant

The English language does not include the word “aquascape.” Dictionary.com has no entry for it. “Aquascape” has become distinctive of Complainant’s goods and services. Many of the third party uses on which Respondent relies are by Complainant’s customers or certified contractors, whose use is authorized by Complainant, or by persons outside the United States or by Complainant itself. Unlike Respondent’s website as at January 25, 2006, none of the websites mentioned in the Response that are unaffiliated with Complainant featured references to Complainant’s name, products and websites.

Respondent’s website as at January 25, 2006 created a false appearance of an affiliation with Complainant. After the Complaint was filed Respondent changed its website to remove all references to Complainant’s products and services and replace them with a list of snorkeling and other water sports-related websites. This supports the view that Respondent has no legitimate interest in the domain name and negates its denial of bad faith.

Respondent

Regardless of whether “aquascape” is recognized by the dictionary, it is used as a term by thousands throughout the world to describe businesses similar to that of Complainant. There are over 200,000 other third party uses of the term when those alleged to be affiliated with Complainant are excluded. Foreign uses are still third party uses.

The links on Respondent’s website were auto-generated by Yahoo and not placed there by Respondent. Those that related to Complainant’s business appeared there as a result of the fact that advertisers bid for the term “aquascape” on <yahoo.com>, which was the source of the links provided in connection with Respondent’s affiliate relationship with Yahoo. These “sponsored” links appear as a result of a search query for “aquascape,” along with related categories. Accordingly, the fact that links related to Complainant were among those appearing on Respondent’s website is not evidence of an intent to confuse consumers because Respondent did not take any affirmative actions to make those links appear there.

After the Complaint was filed, Respondent changed the links to eliminate the appearance of an intent to confuse consumers. Respondent’s counsel did not mention the change in the Response because he was unaware of it.

In any event, Respondent never heard of Complainant prior to receipt of the Complaint and did not place the links on the site that related to Complainant’s business. Respondent was not even aware of the links that were on the site prior to the Complaint being filed.

Respondent owns thousands of domain names and is not aware of what links Yahoo causes to appear on its many domain name sites. At no time did Respondent intend to create confusion, which is the requisite element under the Policy to establish bad faith.

FINDINGS

Complainant has not established all the elements necessary and is not entitled to relief.

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 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.

Identical and/or Confusingly Similar

The Panel does not accept that the word “aquascape” is generic. The Panel has not found it in an English dictionary. In any event, the suffix “-scape” indicates a view or expanse of a particular location; streetscape, desertscape, sandscape, cityscape [from (land)scape]. Accordingly, even if “aquascape” were to be regarded as a common English word, its meaning would be “a view or expanse of water”. That is not the sense in which Complainant has been using the word in connection with water-related goods and services.

Nevertheless, the word “aquascape” is in common use descriptively by others, unaffiliated with Complainant, in connection with water-related goods and services, to such an extent that the Panel is not satisfied that the word “aquascape” has become, through use by Complainant in that field, distinctive of its goods and services. The fact that Complainant is frequently referred to as Aquascape, as a shortened form of its corporate name, does not alter this conclusion. The Panel therefore does not find, on the material before it, that Complainant has common law rights in the mark Aquascape.

On the other hand, the evidence of use accompanying the Complaint satisfies the Panel that Complainant has common law rights in the mark AQUASCAPE DESIGNS in connection with various goods and services relating to residential water gardens and water features. Further, the word “aquascape” is the dominant feature of both that mark and Complainant’s Canadian registered trademark AQUASCAPE DESIGNS (& LOGO).

The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979), which are usually considered in trademark infringement or unfair competition cases. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); see also Northern Light Tech., Inc. v. N. Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).

The disputed domain name wholly incorporates the distinctive feature of Complainant’s common law mark AQUASCAPE DESIGNS and of its Canadian registered trademark AQUASCAPE DESIGNS (& LOGO), to which it is confusingly similar. The “.com” gTLD is inconsequential.

Complainant’s Illinois State trademark registrations are irrelevant both because they have lapsed and because State registrations are not examined and thus do not represent persuasive evidence of ownership of a valid, distinctive trademark. Randan Corp. v. Rapazzini Winery, D2003-0353 (WIPO July 28, 2003) at n.1.

Complainant has established this element of its case.

Rights or Legitimate Interests

Complainant has shown that Respondent has never been known by the name “aquascape”, does not conduct business under that name and was not authorized by Complainant to register a domain name which incorporates the word ‘aquascape’, being the dominant feature of Complainant’s common law and registered mark AQUASCAPE DESIGNS. This establishes a prima facie case against Respondent. The burden therefore shifts to Respondent to provide evidence of its right or legitimate interests under ¶ 4(c) of the Policy. Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, D2004-0753 (WIPO Nov. 11, 2004).

Respondent seeks to demonstrate its rights or legitimate interests in the disputed domain name by showing that, before any notice to it of this dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i).

Respondent relies foremost on “aquascape” being a generic term which anyone may legitimately register. The Panel has rejected this, whilst recognizing that the term is subject to substantial third party descriptive use in the relevant field.

The sporting links that appeared on Respondent’s website after receipt of the Complaint are not relevant under Policy ¶ 4(c)(i).

Before notice of this dispute (by way of the filing of the Complaint), Respondent used the disputed domain name in connection with the provision of advertising services. It made an arrangement for Yahoo! to display advertisements on Respondent’s website at www.aquascape.com. Advertisers paid Yahoo! to have their advertisements brought to the attention of Internet users entering the word “aquascape” into their browsers. The advertisements appearing on Respondent’s website in consequence of this arrangement included links to the advertisers’ websites, in some cases operated by competitors of Complainant and in others operated by Complainant itself or its affiliates. Those advertisements could also be found by entering “aquascape” into a Yahoo! browser.

Absent proof of bad faith, this kind of advertising activity demonstrates a legitimate interest in the domain name on the part of Respondent. First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO May 1, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest); Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum May 25, 2004).

The thrust of Complainant’s case is that Respondent registered the disputed domain name intending to take advantage of Complainant’s goodwill for Respondent’s own gain. Respondent contends that the fact that links related to Complainant were among those appearing on Respondent’s website is not evidence of an intent to confuse consumers because Respondent did not place those links there.

Having found that Complainant has not shown that it has trademark rights in the word “aquascape” standing alone because that word is in common use descriptively by others, unaffiliated with Complainant, in connection with water-related goods and services, the Panel is unable to conclude that Respondent had Complainant in mind either when registering the disputed domain name or prior to notice to it of the dispute. This finding is fatal to Complainant’s case on bad faith (see below) and also supports Respondent’s claim to have a legitimate interest in the disputed domain name.

Complainant has failed to establish this element of its case.

Registration and Use in Bad Faith

As mentioned, because Complainant has not established that it has trademark rights in the word ‘aquascape’ standing alone and because that word is subject to substantial third party use in this field, the Panel is unable to conclude that Respondent had Complainant in mind either when registering the disputed domain name or prior to notice to it of the dispute. See Ohio Savings Bank d/b/a AmTrust v. Manfred Kempa, FA605065 (Nat. Arb. Forum Dec. 12, 2005) (finding ‘while Complainant’s trademark may not be generic, the term is of such common use in the state where Respondent conducts business and where Complainant does not do so, that it is difficult to conclude that there was a deliberate attempt to confuse on Respondent’s part and register the domain in bad faith’). This is fatal to Complainant’s case on bad faith. DK Bellevue, Inc. v. Landers, D2003-0780 (WIPO Nov. 24, 2003) (finding ‘Respondent’s registration cannot have been in bad faith if, at the time, it had not heard of Complainant’); Meguiar’s, Inc. v. Target Online Inc, FA 435003 (Nat. Arb. Forum Mar. 8, 2005).

Although the circumstances taken to constitute evidence of both bad faith registration and bad faith use contained in paragraph 4(b) of the Rules are not exhaustive, they all require some proof of intent or purpose on the part of Respondent vis à vis Complainant or its mark.

The suggestion has been made by the learned panelist in the recent case of Mobile Communication Service Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 4, 2006) that in some circumstances recklessness as to whether a domain name corresponds to a trademark may give rise to a finding of bad faith under paragraph 4(b)(ii) of the Policy. In light of the extensive third party descriptive use of the term ‘aquascape’ in the relevant field and the absence of any trademark rights in Complainant in that word standing alone, this Panel is not prepared to find that Respondent’s lack of knowledge of the advertisements it allowed Yahoo! to post on Respondent’s website amounted to recklessness. Accordingly it is not necessary in this case to decide whether recklessness can amount to evidence of bad faith generally or for the purposes of any of the other sub-paragraphs of Rule 4(b).

Complainant has failed to establish this element of its case.

DECISION

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Alan L. Limbury, Presiding Panelist

Honorable Timothy O’Leary & Steven L. Schwartz, Panelist

Dated: March 7, 2006