The Complainant is Rotork PLC of Bath, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Wynne-Jones, Laine & James LLP, United Kingdom.
The Respondent is H S Gajanan, Protork of Bangalore, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 12, 2016. On October 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 21, 2016.
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, and the proceedings commenced on October 24, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 14, 2016. The Center received an email from the administrative contact of the disputed domain name on November 14, 2016.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on November 22, 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 has provided evidence that it is the owner of the following ROTORK trademarks:
- ROTORK, Indian Trademark with registration number 300407, application date of November 4, 1974 and publication date of June 16, 1976.
- ROTORK, European Union Trademark with registration number 000060277, application date of April 1, 1996 and registration date of February 24, 1998.
The disputed domain name was registered on June 1, 2010. The disputed domain name resolves to a website with advertises, sells and promotes actuators under the name PROTORK. 5. Parties' Contentions A. Complainant
The Complainant is the market leader in actuator manufacture for controlling gas and liquid flow. It has established manufacturing facilities worldwide and provides a global network of local offices and agents who can provide a worldwide service and are able to locally source the Complainant's products. The Complainant's core business is heavy duty valve actuators and the product range includes traditional multi−turn and part-turn actuators, as well as highly accurate rotary and linear actuators for process control applications or various heating, ventilation and air conditioning ("HVAC") actuators and network control systems. The Complainant's products are also advertised on its website "".
The disputed domain name is almost identical to the Complainant's trademark ROTORK and only differs in the preceding letter "p". This hardly changes the visual appearance and aurally it is very likely to go completely unnoticed. The signs are therefore near identical overall and confusion between them is very likely.
The Respondent is using the disputed domain name to advertise, sell and promote actuators under the name PROTORK. The Respondent claims on its website: "PPCL is a leading ball valve manufacturer in India, specializing in both automatic and manual valves. We manufacture ball valves both threaded and flanged, actuated valves and sanitary valves. We serve industries such as HVAC, Mining, Chemical, Pharmaceuticals, Paper & Pulp, Automobiles and Power generation industries throughout India with our high quality products."
These goods are identical with the Complainant's core goods. Furthermore, the targeted industries are also identical with those of the Complainant. The companies are therefore in direct competition. The Respondent has registered a confusingly similar domain name to promote identical goods under this near identical name. The Complainant's business was established and well-known long before the disputed domain was registered. As a consequence the Respondent does not have any legitimate interest in the disputed domain name.
The disputed domain was registered and is being used in bad faith. The Respondent intentionally attempted and still attempts to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's mark as to the source of the Respondent's website or products. This confusion is damaging to the Complainant's business, as business intended to be taken to the Complainant will be taken to the Respondent instead. The Complainant's business was already well established in the Respondent's home country as well as in a large number of other countries around the world by the time the disputed domain was registered. The Complainant is furthermore well known for actuators and famous market leader. It is undeniable that the Respondent has chosen a confusingly similar name to advance its business due to confusion created by the near identical brand name without first having to invest time, effort and money into the development of a successful brand itself.
Additionally, the Respondent's use of the disputed domain is capable of seriously disrupting the Complainant's business. As described above, the Respondent uses the disputed domain to offer and promote identical goods under a near identical name. Given that the Complainant has got no control over the Respondent's product quality in a sector where quality is paramount, any malfunction of the Respondent's products will be associated with the Complainant as well, thereby damaging the Complainant's goodwill and reputation. B. Respondent
The administrative contact of the disputed domain name confirmed receipt of the Complaint via e-mail but the Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the submitted evidence, the Complainant is the owner of the registered trademark ROTORK. The disputed domain name incorporates the Complainant's trademark ROTORK in its entirety with the addition of the single letter "p". Thus, the sole difference between the disputed domain name and the trademark is the letter "p". This is not sufficient to distinguish the disputed domain name from the trademark.
Having the above in mind, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark ROTORK and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show, at least prima facie, that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has used or made 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 prior to any notice of the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
(iii) that it 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.
The Complainant has not licensed or otherwise consented to the Respondent's use of the trademark ROTORK in connection with the disputed domain name which is confusingly similar to the Complainant's trademark.
The Complainant has submitted evidence indicating that the disputed domain name has been used to advertise, sell and promote goods identical to those offered by the Complainant under the trademark ROTORK.
Although given the opportunity, the Respondent has not rebutted the Complainant's prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name . Furthermore, there is no evidence in the case file indicating that 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 Complainant's trademark.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name . Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:
(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Complainant's ROTORK trademark registrations predate the registration of the disputed domain name . Considering that the Respondent is a competitor to the Complainant and that the Respondent uses the disputed domain name to offer goods identical to those offered by the Complainant under the trademark ROTORK, the Respondent must have had the Complainant's trademark in mind when registering and using the disputed domain name. The Complainant has argued that the likelihood of confusion caused by the Respondent's use of the disputed domain name may be detrimental to the Complainant's business given the fact that the Complainant has no control over the Respondent's product quality in a sector where quality is paramount and any malfunction of the Respondent's products may be associated with the Complainant and damage the Complainant's goodwill and reputation.
Thus, the submitted evidence in the case before the Panel indicates that the disputed domain name has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.
There is no evidence in the case file that refutes the Complainant's submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(b) of the Policy and that the disputed domain name has been registered and used in bad faith. 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.
Johan Sjöbeck
Sole Panelist
ate: December 5, 2016
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