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and Mediation Center
Jacuzzi, Inc. v. Jacuzzi Pty. Ltd.
Case No. DAU2005-0003
1. The Parties
The Complainant is Jacuzzi, Inc., Dallas, Texas, United States of America, represented by Donahue Gallagher Woods LLP, United States of America.
The Respondent is Jacuzzi Pty. Ltd., Hallam and/or Patterson Lakes, Australia,
represented by Minter Ellison, Australia.
2. The Domain Name and Registrar
The disputed domain name <jacuzzi.net.au> is registered with Explorer
3. Procedural History
The domain name the subject of this Complaint was
originally included in a complaint relating to the domain names <jacuzzispas.com.au>
and <jacuzzi.com.au>, which was filed with the WIPO Arbitration and Mediation
Center (the “Center”) on March 22, 2005, and which ultimately became
Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO
Case No. DAU2005-0001.
As the persons who are identified as the registrants of the respective domain
names are different, auDA – the policy authority and industry self-regulatory
body for the .au domain space – informed the Center that, under a specific
interpretation of the .au Dispute Resolution Policy (the “auDRP Policy”),
the complaints in relation to each domain name should be brought as separate
complaints if the Complainant still wished to proceed with them. The background
to this matter is discussed in the Panel’s decision on Jacuzzi, Inc.
v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001.
This Complaint was subsequently filed with the Center on June 8, 2005.
Explorer Domains, the registrar of the domain name, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the Disputed Domain Name and that the contact details for the administrative, billing, and technical contact are as set out in the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the auDRP Policy, the Rules for .au Dispute Resolution Policy (the “auDRP 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 June 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2005. The Response was duly filed with the Center on July 4, 2005. Subsequently, in view of an issue in connection with the complaint in relation to the domain name <jacuzzi.com.au>, the Respondent filed an Amended Response on August 4, 2005.
The Center appointed Warwick A. Rothnie, Mary Padbury and Staniforth Ricketson as panelists in this matter on August 10, 2005. The Panel finds that it was properly constituted. Each member of 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.
On August 18, 2005, the Complainant submitted a Further
Statement (with 2 exhibits) with a request that the Panel exercise its discretion,
under auDRP Rules paragraph 12, to allow its inclusion in the record for this
proceeding. The Respondent submitted a rebuttal, Response to the Complainant’s
Further Statement, on August 19, 2005.
4. Factual Background
Jacuzzi Inc. and its affiliated companies operate as manufacturers and distributors of whirlpool baths and spa-related products. It claims to have been so engaged since 1968, when a Mr. Roy Jacuzzi invented the whirlpool bath. Jacuzzi Inc. claims that it, and its affiliated companies, carry on their business in numerous countries including the United States of America, Australia, Singapore, Canada, Italy, France, Germany, United Kingdom, Brazil and Chile. The Complainant alleges that it has worldwide sales in excess of (presumably) US$350 million in each of 2001 and 2002, $400 million in 2003 and $500 million in 2004.
The Amended Complaint states that Jacuzzi Inc. has registered the JACUZZI trademark, or variations thereof, in at least 83 different countries. In Australia, it has registered the following trade marks1:
JACUZZI WHIRLPOOL BATH (bubbles and spiral)
Whirlpool bath equipment being for therapeutic purposes in International class 10
Swimming pools and spas in class 19 … and all other goods in this class
Grilling apparatus and barbeques in class 11; bath tubs and bath fittings; bath installations in this class … and all other goods in this class
Bath equipment, being for therapeutic purposes … in class 10; … and all other goods included in this class
Pumps, inclusive of swimming pool pumps and water system pumps; swimming pool filters … and all other goods included in class 10
Services related to the operation of swimming pools, spas, saunas, gymnasiums … included in class 41
JACUZZI WHIRLPOOL BATH (words in an ellipse, bubbles, arabesque & curved stripe)
Apparatus and installations for heating, steaming, ventilating, water supply and sanity purposes, including whirlpool baths, tub baths … parts, fittings and accessories for the above mentioned goods not included in other classes
The Complainant has also registered numerous domain names including <jacuzzi.com>.
The Respondent carries on business (apparently as
trustee for the respondent in Jacuzzi, Inc. v. Jacuzzi Unit Trust, WIPO
Case No. DAU2005-0002) selling spa baths, accessories and supplies from
two stores in suburbs of Melbourne, Victoria, and via a website to which the
domain name <jacuzzispas.com.au> resolves. It does not seem to be disputed
that this business, including the website, is promoted by reference to a logo.
Nor is it disputed that the products sold and offered for sale by the Respondent
are not products sourced from the Complainant or its affiliates, but are products
of the Complainant’s competitors. The Respondent claims that it, or companies
related to its directors, have been operating the store at Hallam under the
name “Jacuzzi” since 1991. It opened the second store, at Hoppers
Crossing, in October 2004.
The Respondent registered the domain name in August 2003. Unlike <jacuzzispas.com.au>, the domain name does not resolve to an active website.
The Complainant, through its then solicitors, sent a letter of demand in July 1996, to the Respondent’s predecessor at the Hallam store alleging trade mark infringement, false, misleading or deceptive conduct contrary to the trade practices legislation and passing off. The director of the Respondent’s trustee asserts that the Complainant took no further action in relation to these allegations until a further letter of demand, in similar terms, was sent in November 2004, by the Complainant’s present solicitors.
After filing the original, “joint” complaint,
the Complainant commenced Federal Court proceedings No VID316 of 2005 on April
7, 2005, against a number of parties, including the Respondent, its director
and other associated persons. These proceedings allege that the respondents
(including the Respondent) have infringed the Complainant’s registered
trade marks, engaged in false, misleading or deceptive conduct contrary to the
trade practices legislation and passing off. A Defence and Cross-claim in those
proceedings was filed on June 15, 2005. The Defence denies infringement on the
grounds that the Complainant’s registered trade marks, or the term Jacuzzi,
is or has become descriptive. The Defence also denies that the Complainant has
any reputation in Australia in the term Jacuzzi and further claims that the
Complainant is estopped from bringing its action at this stage. The Cross-claim
seeks cancellation or removal from the Trade Marks Register of the Complainant’s
5. Discussion and Findings
Paragraph 15(a) of the auDRP Rules requires the Panel to decide the Complaint on the basis of the statements and documents submitted by the parties and in accordance with the auDRP Policy, the auDRP Rules and those principles of law that the Panel deems applicable. Accordingly, the statements that the Panel takes into account for these purposes are the Amended Complaint and the Amended Response, both of which have a number of annexures and schedules. Having received and reviewed both the Further Statement by the Complainant and the Respondent’s Response noted above, the Panel has also taken them into account as appropriate.
The first preliminary issue that the Panel must address
is the Complainant’s request for all three proceedings to be consolidated.
For the reasons more fully explained in the Panel’s decision in Jacuzzi,
Inc. v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001,
the Panel finds it appropriate to deal with each dispute separately.
The second preliminary issue for consideration is
the Respondent’s request for this administrative proceeding to be terminated
or suspended in light of the commencement of the Federal Court proceedings.
Once again, for the reasons explained in the Panel’s decision in relation
to Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO
Case No. DAU2005-0001, that request is denied.
Under paragraph 4(a) of the auDRP Policy, therefore, the Complainant has the burden of proving the following three elements:
(i) The domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered or subsequently used in bad faith.
The Complainant bears the onus of proof of each of these factors. The Panel turns to consider them.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have rights in a
name or trade mark and, if so, is the domain name identical or confusingly similar
to those rights: see e.g. JupiterMedia Corporation and Australia.Internet.com
Pty Ltd v. Spotpress Pty Ltd, WIPO Case
No. DAU2003-0005 and, to similar effect, GlobalCenter Pty Ltd v. Global
Domain Hosting Pty Ltd, WIPO Case No.
For the reasons the Panel discusses more fully in Jacuzzi, Inc. v. Wangra
Pty Ltd, WIPO Case No. DAU2005-0001, the
Complainant has demonstrated ownership at the very least of the registered trademarks
in Australia referred to in section 4 above.
The second part of the inquiry at this first stage requires a comparison of
the domain name to the trade mark rights of the Complainant that have been established,
independently of questions about how (if at all) or in respect of what (if anything)
the domain name is used. See e.g. GlobalCenter Pty Ltd v. Global Domain Hosting
Pty Ltd, WIPO Case No. DAU2002-0001.
The domain name is not identical to the Complainant’s trade mark rights
as the former includes “.net.au” appended as a suffix to the word
Jacuzzi. Two of the Complainant’s trade marks also include device elements.
The mere addition of such generic material as “.net.au”, however,
cannot escape a finding of confusing similarity to the word marks or the composite
marks involving both word and device elements. See e.g. Advanced Book Exchange
Inc. v. Argyle Emporium, WIPO Case No.
DAU2003-0004; MGM Home Entertainment and ors v. McIlroy Group Management
Pty Ltd, WIPO Case No. DAU2003-0006;
Produits Berger v. Lay Tee Ong, WIPO
Case No. DAU2004-0008.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark rights and the requirements of paragraph 4(a) of the auDRP Policy are satisfied.
B. Rights or Legitimate Interests
The second requirement that the Complainant must establish is that the Respondent
has no rights or legitimate interests in respect of the domain name. In view
of the difficulties in proving a negative, it is usually sufficient for the
Complainant to advance facts giving rise to a prima facie case that the Respondent
does not have the necessary rights or legitimate interests and then an evidential
burden shifts to the Respondent to show the basis for a claim to rights or legitimate
interests in the relevant sense: See e.g. GlobalCenter Pty Ltd v. Global
Domain Hosting Pty Ltd, WIPO Case No.
DAU2002-0001 and Produits Berger v. Lay Tee Ong, WIPO
Case No. DAU2004-0008.
The facts and arguments relied on by each of the parties in this administrative
proceeding are the same as those advanced in connection with Jacuzzi, Inc.
v. Wangra Pty Ltd, WIPO Case No. DAU2005-0001.
In particular, in view of the inter-relationship between the various respondents
to the three proceedings (see, Jacuzzi, Inc. v. Jacuzzi Unit Trust,
WIPO Case No. DAU2005-0002) and, in particular,
the Respondent’s role as the person actually operating the store at Hallam
as well as the store at Hoppers Crossing and the website, the Respondent’s
claim to the benefit of the same three defences available to the respondent
in Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO
Case No. DAU2005-0001, is by no means untenable or implausible. Accordingly,
in the very unusual circumstances of this case the Panel finds that the Complainant
has not discharged its onus under this head for the reasons explained in relation
to Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO
Case No. DAU2005-0001. The Panel finds, therefore, that on the record in
this administrative proceeding the Complainant has been unable to prove that
the Respondent has no rights or legitimate interests in the domain name.
As in Jacuzzi, Inc. v. Wangra Pty Ltd, WIPO
Case No. DAU2005-0001, the Panel emphasises that this finding is made solely
on the record in this administrative proceeding. The matters claimed by the
Respondent are possible defences that may be available to the Respondent. They
are not easy defences to make out, however, and the Respondent may not be able
to establish them. A proper assessment of them may well require much wider evidence
gathering powers, including discovery and cross-examination of witnesses, than
is available in an administrative proceeding of this kind. In view of the limited
nature of these administrative proceedings as proceedings on the papers, therefore,
the Panel’s finding cannot, and should not, be taken as a final endorsement
of the Respondent’s claims.
C. Registered and Used in Bad Faith
The third factor that must be established by the Complainant is somewhat different to the corresponding test under the UDRP in that the Complainant need show only either registration in bad faith or subsequent use in bad faith. That is, registration or use in bad faith are alternative, rather than cumulative, requirements as under the UDRP.
In view of the Panel’s conclusion in relation to the second factor above,
it is unnecessary for the Panel to decide this issue.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Dated: August 24, 2005
The Panel notes that, in
the interests of brevity, the Panel has not reproduced the full specification
of goods or services in each case.