Jacuzzi, Inc. Takes a Bath in Australia AUDRP Ruling

Jacuzzi, Inc. of Dallas Texas initiated administrative proceedings against the Jacuzzi Unit Trust of Patterson Lakes, Australia to recover the domain name <jacuzzi.com.au>. The three judge panel found that although Jacuzzi Inc. has registered the JACUZZI trademark, or variations thereof, in at least 83 different countries including Australia, and although the domain in question was found to be confusingly similar to the JACUZZI trademark, the evidence was insufficient to order the transfer of the domain name.

This will likely not be the end of the question however. The Jacuzzi Unit Trust denied infringement on the grounds that the Complainant’s registered trademarks, or the term “Jacuzzi”, is or has become “descriptive” – a common defense to trademark infringement allegations. The panel found that the issues raised in the matter required a more in-depth analysis of the issues than could be provided in a WIPO administrative hearing. The panel stated “A proper assessment of [the issues] requires 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.”

The opinion noted in particular that shortly after the commencement of the administrative proceeding, Jacuzzi, Inc. also commenced Federal Court proceedings No VID316 of 2005. The panel’s comments indicate clearly that in matters with significant issues of fact such as were involved in this matter, the courts offer a better forum and a fuller investigation of the issues presented than can be offered by the WIPO arbitration process.

Jacuzzi, Inc. v. Jacuzzi Unit Trust - Case No. DAU2005-0002