The Complainant is Pentair Flow Services AG of Schaffhausen, Switzerland, represented by Roetzel & Andress LPA, United States of America ("USA").
The Respondent is WhoIs Agent, WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, USA / GEORGE WASHERE of Panama City, Panama. 2. The Domain Name and Registrar
The disputed 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 June 12, 2017. On June 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 16, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 16, 2017. From this point forward a reference to "the Respondent" will be a reference to the Respondent "George Washere" only.
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 June 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 12, 2017.
The Center appointed William P. Knight as the sole panelist in this matter on July 18, 2017. 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 and its related corporations manufacture and distribute water, fluid, thermal management, and equipment protection products and services used in the energy, food & beverage and manufacturing industries as well as infrastructure. Its predecessor in title was founded in 1966 in Minnesota in the United States of America and it is now part of a global business with 2015 revenues of USD 6.43 billion and it employs more than 30,000 people worldwide. The Complainant is the registered owner of the trademark PENTAIR and related makes in many countries including the United States Trademarks (among others):
Mark
Goods/Services
Registration No.
Registration Date
PENTAIR
Goods in Class 7
2,573,714
May 28, 2002
PENTAIR and arrow device
Goods in Class 7
2,591,597
July 9, 2002
PENTAIR
Various goods in Classes 7, 9, 11, and 20
4,348,967
June 11, 2013
PENTAIR
Various goods and services in Classes 6, 7, 9, 11, 17, 36, 37, 40, 41 and 42
4,804,540
September 1, 2015
PENTAIR and arrow device
Various goods and services in Classes 6, 7, 9, 11, 17, 36, 37, 40, 41 and 42
4,809,071
September 8, 2015
PENTAIR and arrow device
Goods in Class 20
5,003,565
July 19, 2016
PENTAIR
Services in Class 35
5,022,717
August 16, 2016
PENTAIR & Design
Services in Class 35
5,003,584
July19, 2016
The Complainant's affiliated entity, Pentair, Inc., also owns and operates a website at "".
The disputed domain name was registered on March 12, 2017 and has only been used for a parking page that offers Internet users links to other websites, including those offering competing goods and services.
The Respondent has been the recipient of numerous complaints under the Policy and other domain name dispute resolution policies, to date some 6 complaints determined through the Center since 2013, and the same number through the National Arbitration Forum since 2012, in respect of domain names incorporating well-known trademarks of a wide variety of enterprises, from a provider of security services to a brewer, and even a manufacturer of stethoscopes. In all cases but one, bad faith registration and use has been found and the disputed domain names transferred.
It should also be noted that the disputed domain name was registered with a manifestly false address, and obviously spurious telephone and fax numbers. The Respondent's name is almost certainly a fabrication ("George was here"). 5. Parties' Contentions A. Complainant
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the disputed domain name is confusingly similar to the Complainant's trademark PENTAIR;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) that the disputed domain name has been registered and is being used in bad faith.
In respect of paragraph 4(a)(i), the Complainant dilates upon the matters referred to above and provides substantial supporting evidence to establish that the PENTAIR mark has become distinctive and well-known globally and has enjoyed such distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name. The Complainant further asserts that the disputed domain name is confusingly similar to the Complainant's PENTAIR mark in that it differs only in the addition of an extra word "partner" and, further, the use of this word suggests an affiliation or relationship with the Complainant exacerbating the likelihood of confusion by suggesting or indicating an affiliation or relationship between the Complainant and the Respondent, which does not exist.
In support of paragraph 4(a)(ii), the Complainant contends that:
(a) the disputed domain name is not being used for any purpose other than to provide a parking page with computer generated sponsored links, including links to websites offering competing goods and services;
(b) the Respondent's use of the disputed domain name to provide sponsored links that offer third parties' competitive goods, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name; and
(c) there is nothing in the name or other details of the Respondent to indicate that it is known by or uses "pentairpartners" as a trademark or otherwise for any purpose.
The Complainant also notes that the Respondent is not licensed or authorized by the Complainant to use the disputed domain name.
In support of paragraph 4(a)(iii), the Complainant asserts that bad faith is evidenced by the Respondent's use of the disputed domain name with the intention of attempting to attract, for commercial gain, Internet users to the Respondent's parking page with sponsored links, by creating a likelihood of confusion with the Complainant's globally well-known trademark, of which there could be no doubt that the Respondent was aware, as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product on the Respondent's website or location (see paragraph 4(b)(iv) of the Policy).
The Complainant further argues that the Respondent's bad faith is further evidenced by that fact that the Respondent received two cease and desist letters from the Complainant and, without deigning to reply, nevertheless continues to use the disputed domain name in the same manner. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
The Panel is satisfied that, through the efforts of the Center, the Respondent was in fact served electronically by the Center and put on actual notice of the Complaint, notwithstanding that attempts to serve the Complaint at the physical address and other contact details provided by the Respondent were doomed to failure by reason of their falsity. Indeed, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to it, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established its trademark rights in its mark PENTAIR.
The determination of confusing similarity is a factual one which must be satisfied by the Panel making a side-by-side comparison of the Complainant's trademark and the disputed domain name, taking into account the degree of aural, visual, or conceptual similarity between the two, in order to assess whether the mark is recognizable within the disputed domain name; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Under this first requirement of the Policy to be established by the Complainant, there is no requirement to consider the actual use being made of the disputed domain name by the Respondent; see WIPO Overview 3.0, section 1.1.2. The Policy does not call for proof of actual confusion.
Placed side-by-side, the confusing similarity between the Complainant's trademark and the disputed domain name is self-evident. The dominant component of the disputed domain name is the trademark PENTAIR. (The addition of the word "partner" does nothing more than to indicate an affiliation or other connection between the Complainant and the Respondent, which is false.) B. Rights or Legitimate Interests
The Respondent clearly has no rights or legitimate interests in disputed domain name, any more than he had in most of the other trademarks of third parties he has appropriated for his own purposes, in order to attract Internet users to the sponsored links offered from time to time on the landing page of the disputed domain name, including goods and services which directly compete with goods and services offered by the Complainant. C. Registered and Used in Bad Faith
There can be no doubt that the Respondent registered the disputed domain name in bad faith, making that clear by the fact alone of the use of false contact details. This was clearly done to attract, for commercial gain, Internet users to the sponsored links on the landing page using the disputed domain. This equally establishes the Respondent must have been aware of the Complainant's rights at the time of registration. Subsequent bad faith is demonstrated by the continuing use of the disputed domain name notwithstanding letters of demand making clear the Complainant's rights.
Such conduct qualifies as "bad faith" within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
In the light of the findings in Section 6 above, the Panel concludes that:
- the disputed domain name is confusingly similar to the trademark PENTAIR of the Complainant;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 4(i) of the Policy and 15 of the Rules that the disputed domain name be transferred to the Complainant.
William P. Knight
Sole Panelist
Date: July 20, 2017
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