Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America, represented by Roetzel & Andress LPA, United States of America.
Respondent is WHOIS Agent, WHOIS Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / MEDIA2K GROUP of Dover, Delaware, United States of America, represented internally. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On November 1, 2016, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On November 1, 2016, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on November 3, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 5, 2016. Complainant filed a second amendment to the Complaint on November 11, 2016.
The Center verified that the Complaint together with the amended Complaint and Second 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 Respondent of the Complaint, and the proceedings commenced on November 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2016. The Response was filed with the Center on November 22, 2016
The Center appointed Robert A. Badgley as the sole panelist in this matter on December 8, 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.
Complainant submitted a Supplemental Filing to the Center on December 16, 2016. Respondent submitted a reply to Complainant’s Supplemental Filling on December 21, 2016. A further submission from Complainant was received on December 22, 2016. The Panel, in its discretion, has decided to consider the supplemental filings. 4. Factual Background
According to the Complaint, Complainant (and its various subsidiaries, affiliates, and/or predecessors-in-interest) has continuously and extensively used the GOYEN trademarks in the United States and in other countries worldwide in connection with the sale of various goods and services, including valves for use with mechanical dust collectors, valves of metal, steam traps, dust filter cleaning apparatus and parts and accessories therefor, machine cylinders, central processing units, barometers, gauges, emissions control and monitoring apparatus, as well as the installation, maintenance and repair of pneumatic actuators, valves being pneumatic, diaphragm, solenoid, dust collector and other fluid valves.
The mark GOYEN was registered with the United States Patent and Trademark Office on June 18, 1985 under registration number 1342050, with a 1969 date of first use in commerce. The holder of this trademark registration is Goyen Controls Co Pty Limited (“Goyen Controls”), an entity incorporated under the laws of Australia.
According to Complainant, and an affidavit submitted by one of its directors, Goyen Controls and Complainant are “related” companies. Complainant also offers into evidence some of its web pages which make mention of both itself and the GOYEN mark.
The Domain Name was registered on April 10, 1998. It is unclear from the record whether Respondent has owned the Domain Name for 18 years, or what use (if any) has been made of the Domain Name until recently. In any event, since at least October 12, 2016, the Domain Name has resolved to a website which provides hyperlinks to other web pages, some of which sell third-party products which, according to Complainant, are “similar or related to – or competitors with – the Complainant’s products.” For example, one linked web page offers for sale air admittance valves, ball valves, and check valves, and another linked page offers for sale noise-elimination check valves, ball check valves, wafer check valves, and swing check valves. Still other linked web pages offer for sale goods which, Complainant asserts, “are either closely similar to or directly competitive with the Complainant’s products.”
Complainant sent Respondent a cease-and-desist letter on October 4, 2016, to which Respondent did not respond. Respondent asserts that “it cannot locate any record of receipt of such cease and desist letter.” 5. Parties’ Contentions A. Complainant
Complainant asserts the Domain Name is confusingly similar to the GOYEN mark in which Complainant, as an affiliate of the mark holder, has rights. According to Complainant, prior to notice of this dispute by way of Complainant’s October 4, 2016 cease-and-desist letter, Respondent was not using the Domain Name in connection with a bona fide offering of goods or services, nor was there any indication that Respondent was making “demonstrable preparations” to do so.
Complainant asserts that Respondent’s use of the Domain Name constitutes a bad faith attempt, for commercial gain, to capitalize on the GOYEN mark by diverting through consumer confusion Internet users looking for Complainant’s goods to Respondent’s website and the sites to which it sends users via hyperlink. B. Respondent
Respondent essentially makes two main assertions. First, Complainant has failed to demonstrate that it – as opposed to Goyen Controls – has any trademark rights in the mark GOYEN. Second, with respect to the content of the website to which the Domain Name resolves, “all advertisements associated with the Domain Name were automated” and Respondent “had no influence in such advertisements.”
In its submission of December 21, 2016, Respondent claimed that the evidence of an affiliation between Complainant and Goyen Controls is not sufficient proof of Complainant’s rights in the trademarks of the latter. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through its sister company’s registration and Complainant’s own use, in the mark GOYEN. The Panel also finds the Domain Name to be confusingly similar to the GOYEN mark, as it incorporates that mark in its entirety and adds the term “valve.” Because valves are among the main products sold under the GOYEN mark, this additional word does not diminish the confusing similarity between the mark and the Domain Name.
The Panel notes that the evidence of Complainant’s rights in the mark (as opposed to the rights of its sister company Goyen Controls) was tenuous until Complainant’s Supplemental Filing. The link between Complainant and the actual mark holder should have been better established the first time around. In any event, the Panel in its discretion received the additional evidence and is satisfied of Complainant’s rights in the mark.
Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent has not come forward with convincing argument of any possible bona fides. The Domain Name resolves to a website containing links to websites offering products sold by Complainant or Complainant’s competitors. Such a parasitic use is decidedly not a bona fide offering of goods or services.
Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent argues that Complainant had failed to show that it (as opposed to Goyen Controls) holds trademark rights in GOYEN. This argument had some facial appeal until Complainant submitted its Supplemental Filing. In any event, Respondent has never denied knowledge of the GOYEN mark – regardless of its actual owner. Further, the fact that the Domain Name resolves to a website linking to sites offering for sale the same types of products as are offered under the GOYEN mark indicates that Respondent had the GOYEN mark in mind when registering the Domain Name. The fact that the Domain Name includes not only the GOYEN mark but the word “valve” makes this clear.
Respondent’s use of the Domain Name violates the above-quoted paragraph 4(b)(iv) of the Policy. Having registered the Domain Name which, again, is comprised of the GOYEN mark plus a noun reflecting the very product that is sold under that mark, Respondent cannot shrug off the fact that the advertisements on its website lead Internet users directly to Complainant’s competitors.
Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: December 22, 2016
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