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 WenBin Fei, ShangHaiPuLeShiYeYouXianGongSi of Nanchong, Sichuan, 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 in English with the WIPO Arbitration and Mediation Center (the "Center") on November 14, 2016. On November 15, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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. On November 18, 2016, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On the same day, the Center transmitted an email to the Parties requesting the Complainant to amend the Complaint. The Complainant submitted the amended Complaint on November 23, 2016. The Complainant did not reply to the Center's email regarding the language of the proceeding, but the Complaint has included a request for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 English and Chinese, and the proceedings commenced on November 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 19, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on December 21, 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, headquartered in the United States of America, is a multinational water, fluid, thermal management and equipment protection company. The Complainant has since as early as 1995 continuously used the business name and brand name "Everpure" and "Pentair" in connection with the sale of a wide range of water pumps, water storage tanks, water filters, water heaters, lighting and thermal management systems and equipment, and related products.
The Complainant is the proprietor of several trade mark registrations in many jurisdictions worldwide for EVERPURE and PENTAIR, including the following:
Jurisdiction
Mark
Registration No.
Registration Date
United States of America
EVERPURE
522,527
March 21, 1950
United States of America
EVERPURE
3,195,599
January 9, 2007
United Kingdom
EVERPURE
1100578
March 8, 1978
Hong Kong
EVERPURE
300051731
July 23, 2003
United States of America
PENTAIR
2,573,714
May 28, 2002
Singapore
PENTAIR
T1207243Z
May 22, 2012
Hong Kong
PENTAIR
302240351
May 3, 2012
China
PENTAIR
3504312
December 28, 2004
The Complainant is also the registered proprietor of domain names incorporating the trade marks EVERPURE and PENTAIR, including (registered since December 21, 1995), (registered since October 17, 1996) and (registered since July 27, 1999).
The disputed domain name was registered by the Respondent on April 12, 2016, long after the Complainant had used and registered its trade marks EVERPURE and PENTAIR. According to the Complainant and as at the date of this decision, the disputed domain name appears to be used to distribute malicious computer malware. 5. Parties' Contentions A. Complainant
The Complainant contends as follows:
1. The disputed domain name comprises its trade marks EVERPURE and PENTAIR in their entirety, and is therefore identical and/or confusingly similar to its trade marks EVERPURE and PENTAIR.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name - it is not using the disputed domain name in connection with a bona fide offering of goods or services; it is not commonly known by "pentair" or "everpure"; it is not in any way affiliated with the Complainant; and the Complainant has never authorized or otherwise consented to the registration of the disputed domain name or the use of its trade mark(s) by the Respondent.
3. The disputed domain name has been registered and is being used in bad faith for the purpose of attracting, for commercial gain, Internet users to the Respondent's website with malicious computer malware.
The Complainant requests for the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Respondent is a company incorporated in China and its administrative contact is presumably a Chinese native residing in China. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain name is registered in Latin characters, rather than Chinese script;
(b) the Respondent has registered numerous other domain names comprising Latin characters, e.g., , , , , , , , , , and , based on a reverse WhoIs search conducted independently by the Panel using the Respondent's email address.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English; and
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has failed to do so.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in EVERPURE and PENTAIR by virtue of its use and registration of the same as trade marks.
The disputed domain name effectively incorporates and combines two of the Complainant's trade marks EVERPURE and PENTAIR which makes it all the more confusingly similar. The addition of the generic Top-Level Domain ("gTLD") ".com" does not impact the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant's trade marks.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade marks EVERPURE and PENTAIR.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the EVERPURE and PENTAIR trade marks or to seek registration of any domain name incorporating the trade marks. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term "everpure" or "pentair".
According to the Complainant and as at the date of this decision, the disputed domain name appears to be used to distribute malicious computer malware. According to common understanding, "malware" is taken to refer to a variety of hostile, intrusive, or annoying software or program code designed to infiltrate or damage a computer system without the owner's informed consent. Use of a domain name to divert Internet users and maliciously infect their computer systems is clearly not a bona fide offering of goods or services. Nor is such use legitimate or fair. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for the content that appears on a website at its domain name.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish his rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Complainant has been using the names EVERPURE and PENTAIR as trade marks in connection with the sale of a wide range of water pumps, storage tanks, filters, heaters and related products for 20 years. A cursory Internet search would have disclosed the EVERPURE and PENTAIR trade marks and their extensive use by the Complainant. A presumption can be made that the Respondent was aware of the Complainant's trade marks and related domain names when it registered the disputed domain name. Registration of a domain name that incorporates a complainant's well-known trade mark suggests opportunistic bad faith.
Registration of a domain name that incorporates and combines two trade marks belonging to the same owner is indicative of an intention to prevent the owner of the trade marks from reflecting its marks in a corresponding domain name. This suggests bad faith intention.
The disputed domain name appears to be used to distribute malicious computer malware. Malware is often used to generate significant revenues for the perpetrators of such malware by confusing Internet users into clicking on advertisements or making purchases, or to steal the financial information and/or identity of the unsuspecting victims. Although there is no clear evidence of commercial gain, the motive of the Respondent is clearly malicious. The use of the disputed domain name clearly seeks to capitalise on the trade mark value of the Complainant's EVERPURE and PENTAIR trade marks and is disruptive to the Complainant's business. Internet users and the Complainant are both adversely affected by the Respondent's use of the disputed domain name. These are all prima facie evidence of bad faith use.
Furthermore, efforts to send the written notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details.
The Respondent has not denied the Complainant's allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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.
Sok Ling MOI
Sole Panelist
Date: January 2, 2017
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