The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America, represented by Roetzel & Andress LPA, United States of America.
The Respondent is Ping Kang, Kang Xiao Ping of Nanjing, Jiangsu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 31, 2016. On April 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 5, 2016, 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. In response to a notification by the Center regarding the Registrar's information, the Complainant filed an amended Complaint on April 8, 2016.
On April 5, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 8, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on April 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 2, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on May 4, 2016. 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 is a corporation that sells numerous goods and services including pumps; water storage tanks; water filters; water filtration, treatment, reverse osmosis, softening, deionization, desalination, sterilization, and storage equipment and systems; pool and spa vacuums and cleaners; hydraulic controls; spraying equipment; valves; automatic valves and water heaters.
The Complainant is the owner of many registrations of trademarks consisting of the word PENTAIR in multiple jurisdictions. These include Chinese trademark registrations (with their respective dates of registration) No. 3504310 (2005), No. 3504311 (2006), No. 3504312 (2004), No. 3504313 (2011), No. 3504316 (2007), No. 3504698 (2005), No. 3941311 (2006), No. 3941312 (2006), No. 3941313 (2006), No. 3941315 (2006), No. 3941316 (2005), No. 3941317 (2006) and No. 3941319 (2006). These registrations variously specify pumps, water purifying apparatus, water treatment and numerous other goods and services. The Complainant also operates websites at the domain names and .
The Respondent is an individual in Nanjing, China and the registrant of the disputed domain name. The disputed domain name was created on December 25, 2015. Prior to the filing of the Complaint, the disputed domain name resolved to a website that displayed a list of what appear to be links to articles. The website explained that these articles were for users to share with friends and thereby generate income according to the number of views. At the time of filing the Complaint, the website displayed a Quick Response (QR) code with an invitation to press it in Chinese. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant's PENTAIR trademark. The disputed domain name incorporates the key "pentair" element of the Complainant's trademarks and merely adds a dash and the generic term "water". The disputed domain name is substantially identical to the Complainant's trade name "Pentair Water" and its domain name .
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sold any goods or services on its website and is not making any demonstrable preparations to do so. The Respondent is not commonly known by the disputed domain name. The Complainant is not affiliated with the Respondent in any manner. The Respondent is seeking to capitalize on the Complainant's goodwill in its PENTAIR trademark by diverting Internet users using those trademarks to search for the Complainant's products, which is not a legitimate use.
The Complainant argues that the Respondent has, by using the disputed domain name, intentionally attempted to redirect Internet users seeking information on the Complainant's products to a website displaying unrelated content. The Respondent did not respond to the Complainant's cease-and-desist letter, which is evidence of bad faith. The Respondent was placed on constructive notice of the Complainant's trademark rights by the Complainant's United States and foreign trademark registrations. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. It draws attention to the fact that a cease-and-desist letter written in English was sent to the Respondent prior to the filing of the Complaint (to which the Respondent did not reply), and much of the documentation and evidence submitted with the Complaint is also in English. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties (See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293).
The Panel observes that the Complaint in this proceeding was filed in English. The Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain name is 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of PENTAIR.
The disputed domain name incorporates the Complainant's trademark in its entirety. The disputed domain name contains the additional element "-water". That is merely a dictionary word, preceded by a hyphen. The Panel finds that this additional element in the disputed domain name is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark (see Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110).
The disputed domain name also contains the generic Top-Level Domain ("gTLD") suffix ".com" but a gTLD suffix generally has no capacity to distinguish a domain name from a trademark. (See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080).
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances, the website displays prices below some of the linked articles and explains that income is generated (for users) according to the number of views. The evidence on file does not indicate what could be transacted on the linked pages or via the QR code. However, the information displayed on the website had no apparent connection with the Complainant or its products. The Complainant also submits that it has no connection with the Respondent. Yet the disputed domain name is confusingly similar to the Complainant's trademark. Therefore, the evidence shows that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services but rather that the disputed domain name is being used to misleadingly divert consumers. Accordingly, the Panel does not consider that the facts of this dispute fall within the first or third circumstances of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "Ping Kang" and "Kang Xiao Ping". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The burden to produce some evidence of the existence of a right or legitimate interest now shifts to the Respondent but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location."
The Respondent registered the disputed domain name in 2015, several years after the Complainant obtained its trademark registrations, including in China where the Respondent is located. The only distinctive element of the disputed domain name is identical to the Complainant's trademark PENTAIR, which is not a dictionary word. The disputed domain name is identical to the domain name of one of the Complainant's websites save for the addition of a hyphen. This indicates to the Panel that the Respondent intentionally chose to register the Complainant's trademark and use it as a domain name.
The Respondent uses the disputed domain name, which wholly incorporates the Complainant's PENTAIR trademark, with a website that has nothing to do with the Complainant. The addition of the element "-water" to the disputed domain name also increases the likelihood of confusion with many of the Complainant's goods and services. Yet the Respondent has no authorization from the Complainant to register or use its trademark. Given all these facts and those set out at Section 6.2B above, the Panel considers that the Respondent's use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of the products on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: May 18, 2016
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