The Complainant is Pentair, Inc., of Golden Valley, Minnesota, United States of America (the “USA”), represented by Roetzel & Andress LPA, USA.
The Respondent is Liu Qianomd of “Alaska, Algeria”. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 1, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 6, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 7, 2015.
The Center appointed Yong Li as the sole panelist in this matter on August 14, 2015. 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 owns rights in the U.S., China and in numerous other countries worldwide in and to the PENTAIR trademark. The Complainant (and its various subsidiaries) has continuously used the PENTAIR Trademarks since at least as early as 1999 in connection with the sale of numerous goods and services including (without limitation) water storage tanks, water filters and other equipment in relation to swimming pools and spas.
The disputed domain name was registered on September 22, 2014. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s mark because it incorporates the key “Pentair” element of the Complainant’s valuable PENTAIR trademark and merely adds the term “jieming” thereto.
The Complainant further contends that the Respondent has no connection with the Complainant or tis PENTAIR trademarks and has not obtained authorization from the Complainant to use its PENTAIR trademarks. The Respondent’s use of the PENTAIR trademark in the disputed domain name does not constitute a legitimate use and does not create any legitimate rights or interests in the disputed domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website by using and taking advantage of reputation of and goodwill in the Complainant’s well-known PENTAIR trademark. The Respondent’s bad faith is further evidenced by that the Respondent received two cease and desist letters from the Complainant and did not respond to them. Instead the Respondent continued to use the disputed domain name.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) the Policy, the Complainant requesting the transfer of a domain name must prove the following three elements: 1) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 2) Respondent has no rights or legitimate interests in the domain name; and 3) Respondent has registered the domain name and is using it in bad faith. A. Identical or Confusingly Similar
The Complainant is the owner of the trademark registrations in numerous countries worldwide for the word PENTAIR, including US Registration Number 2,573,714 and China Registration Number 115191182. The disputed domain name incorporates the Complainant’s trademark in its entirety. The disputed domain name differs from the Complainant’s trademark only by adding the word “jieming” and by an additional generic Top-Level Domain (“gTLD”) suffix “.com”.
It is well-established that a domain name that wholly incorporates a complainant’s registered mark typically establishes identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks. (E.g., EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd.,WIPO Case No. D2000-0995).
Also the addition of the gTLD suffix “.com” to a disputed domain name does not avoid confusing similarity (see, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Consequently, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. The Panel finds that the Complainant has established a prima facie case in this regard, inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the PENTAIR trademark.
The Respondent has not provided evidence of circumstances of the type specified in the Policy, paragraph 4(c) to prove that the Respondent has rights or legitimate interests in respect of the disputed domain name. Furthermore, the Respondent has not provided evidence of any other circumstances giving rise to a right or legitimate interest in the disputed domain name. The Complainant’s evidence shows that the Respondent’s website contains links which connect Internet users to a page showing numerous advertisements and to links to gambling sites. The diversion of Internet traffic by Respondent to other unrelated websites does not represent a use of the disputed domain name in connection with a bona fide offering of goods and services. (See, Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that the Complainant’s trademark PENTAIR is an invented and distinctive term. The Complainant has provided evidence to prove that the Complainant has numerous trademark registrations for PENTAIR worldwide long before the registration date of the disputed domain name. In addition, the Complainant owns the domain names (since February 21, 2010), (since July 27, 1999) and (since August 30, 1999). The Complainant has continuously and extensively used the trademark PENTAIR as early as 1999 in connection with the sale of numerous goods and services. It is very unlikely that the Respondent would have registered a domain name incorporating the Complainant’s trademark without knowledge of the Complainant’s distinctive trademark PENTAIR. Based on the foregoing circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith. See Hoffmann-La Roche Inc. v. WhoisGuard,WIPO Case No. D2005-1288 (“with the widespread fame of the TAMIFLU mark it is simply not credible to believe that Respondent registered the disputed domain name without knowledge of Complainant’s mark. Only someone with knowledge of the mark – considering the fact that the mark is an invented term – could have registered the disputed domain name. Thus Respondent registered the disputed domain name in bad faith”).
The Complainant has also provided evidence to prove that the Respondent is using the disputed domain name to direct Internet users to a page showing numerous advertisements and many links to various gambling sites, many are related to big casinos in Macao. Based on the evidence in the record of this case, particularly the screen shots submitted by the Complainant, the Panel believes that the Respondent is using the disputed domain name to advertising links to websites which offer products and services of third parties for earning click-through commissions. This is a common example of use in bad faith. See L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623 (“such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of internet user is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions”).
Accordingly, having regard to the circumstances of this case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Yong Li
Sole Panelist
Date: August 23, 2015
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