Complainant is Pentair Residential Filtration, LLC of Milwaukee, Wisconsin, United States of America (“U.S.”), represented by Roetzel & Andress, U.S.
Respondents are Robert Cardana of Rexford, Montana, U.S. / B Card of Rexford, Montana, U.S. / Cardana Internet Marketing, LLC, D/B/A Dovetail Distribution, Inc. of Rexford, Montana, U.S. / Perfect Privacy, LLC of Jacksonville, Florida, U.S., represented by Bowles Rice, LLC, U.S. 2. The Domain Names and Registrar
The disputed domain names , ,
, , , , , , , , , and (the “Domain Names”) are registered with TLDS L.L.C. d/b/a SRSPlus (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2017. On June 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants and providing the contact details.
The Center verified that the 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 Respondents of the Complaint, and the proceedings commenced on June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. On July 14, 2017, Respondents filed a request for an automatic extension of time. This extended the date to respond until July 20, 2017. The Response was filed with the Center on that date.
Complainant submitted Supplemental Filings on August 10 and 14, 2017; Respondent submitted Supplemental Filings on August 11, 2017 and August 15, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 1, 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
Complainant owns U.S. Registration Nos. 1,608,999 (registered on August 7, 1990) and 4,172,435 (registered on July 10, 2012) for the OMNIFILTER mark (the “OMNIFILTER Mark”). Further, another Pentair entity affiliated with Complainant owns the domain names and , among others. Complainant (and its various affiliates) has continuously and extensively used the OMNIFILTER Mark in the U.S. and in several other countries and jurisdictions, since at least as early as 1976, on and in connection with the sale of various goods and services, including without limitation, domestic water filtering units, replacement filter cartridges, and water softening units.
Respondents registered the Domain Names on the following dates: (registered on February 6, 2001); (registered on May 28, 2010); (registered on December 9, 2015); (registered on December 9, 2015); (registered on February 6, 2001); (registered on August 3, 2006); (registered on August 3, 2006); (registered on August 3, 2006); (registered on August 3, 2006); (registered on April 18, 2017); (registered on February 6, 2001); and (registered on October 17, 2000). The Domain Names have been used to direct users to webpages that listed sponsored links to various other webpages, offered goods competing with the Complainant’s on the webpages, or they used to be linked to Respondents’ other websites. 5. Parties’ Contentions A. Complainant
The Domain Names are confusingly similar to the OMNIFILTER Mark because: they incorporate the term “omni”, or the terms “omni” and “filter” together, which are either identical or confusingly similar to the OMNIFILTER Mark; adding descriptive terms such as “filters”, “dealers”, and “water” is not sufficient to differentiate the Domain Names from the OMNIFITLER Mark because such terms are descriptive of some of the goods and services that Complainant offers under its Mark; and there is nothing to differentiate the Domain Names from the and Domain Names.
Here, prior to notice of this dispute Respondents were not using the Domain Names in connection with a bona fide offering of goods or services, nor were there any indications that Respondents were making “demonstrable preparations” to do so, as the Domain Names at that time either directed users to similar webpages that listed sponsored links to various other webpages, offered competing goods on the webpages, or linked to Respondents’ other websites. As of June 5, 2017, the domain name directed users to a webpage listing additional domain names of one of Respondents some of which sell third-party products. Additionally, as of June 5, 2017, the , , , , , and Domain Names directed users to a webpage, which sells third-party products. Furthermore, Respondents habitually misrepresent an affiliation with Complainant when no such affiliation exists. As per an affidavit of record provided by the territory account manager of Complainant, Respondents are not, and never have never been, affiliated in a formal manner with Complainant. As of June 8, 2017, many of the Domain Names directed users to webpages containing statements leading users to believe that the website operator is an authorized distributor for Complainant and its affiliated entities. Likewise, as of June 8, 2017, the Domain Name directed users to a webpage, which misrepresents that Complainant can be contacted at one of Respondents’ telephone numbers and addresses. These examples show that Respondents are not making legitimate use of the Domain Names. Rather than a legitimate use, Respondents are instead seeking to capitalize on Complainant’s goodwill in its OMNIFILTER Mark by diverting Internet users who use that Mark to search for Complainant’s products. In view of Respondents’ use of the Domain Names: to either provide sponsored links to third parties’ commercial websites, refer Internet users back to Respondents’ own websites, or offer third-party products, Respondents are not making legitimate noncommercial or fair use of the Domain Names. Likewise, upon information and belief, Respondents are not commonly known by the Domain Names or by “omni”. Complainant is not affiliated with Respondents in any formal manner and has not had any contact with Respondents other than engaging in the email correspondence commencing prior to April 18, 2017. Complainant has never expressly or impliedly authorized Respondents to use the OMNIFILTER Mark or the Domain Names.
Respondents have registered and are using the Domain Names in bad faith because they have intentionally attempted to redirect Internet users seeking information on Complainant’s products to websites displaying unrelated content, including the sales and marketing of third-party goods and services, which are in some cases competitive with the goods and services of Complainant. Respondents are taking advantage of the confusing similarity between the Domain Names and the OMNIFILTER Mark, and upon information and belief, Respondents are presumably profiting from the goodwill associated with the OMNIFILTER Mark. The circumstances surrounding the registration of the Domain Names indicate that Respondents, by and through their controlling owner Robert Cardana, acquired the Domain Names primarily for the purpose of selling them to Complainant. In fact, Respondents offered to transfer the Domain Names to Complainant for approximately USD 540,000. Respondents were placed on constructive notice of Complainant’s trademark rights by their various U.S. federal and foreign trademark registrations for the OMNIFILTER Mark and Respondents were placed on actual notice of Complainant’s trademark rights by Respondents’ engagement (via their controlling owner Robert Cardana) in email correspondence commencing before April 18, 2017. Here, Respondents knew that Complainant had rights in and to the OMNIFILTER Mark pursuant to email correspondence exchanged between Complainant and Robert Cardana. On the same day that Complainant initiated the email correspondence, Respondents registered the Domain Name. B. Respondents
Respondents filed a hybrid-style document called a “Verified Response” that is part litigation-style pleading (e.g., it contains an “Answer”, two “Defenses”, with a series of summary admissions or denials), while also addressing certain Policy issues. Respondents include some assertions and argument. The salient ones are summarized here.
Respondents have been for about 16 years, and continue to be, authorized resellers of Complainant’s water filters. (Respondents attached several demonstrative invoices to confirm the alleged relationship between the parties). Respondents registered the Domain Names as authorized resellers for Complainant and the registrations were made with the full knowledge and acquiescence of Complainant. As authorized resellers, Respondents claim to have been actively selling Complainant’s water filters utilizing the Domain Names since as early as October 17, 2000. The majority of the Domain Names have been used by Respondents with Complainant’s knowledge for nearly 11 years. Not until April, 2017, did Complainant ever express any objection to such use. As the result, Complainant’s claims are barred by the equitable defenses of laches, waiver, estoppel and acquiescence. Respondents have invested in and developed the Domain Names and losing them will result in economic damage to Respondents. Even if the Panel were to conclude none of these equitable defenses are applicable, clearly Respondents have developed rights and legitimate interests in the Domain Names and they are not being used in bad faith because Respondents are authorized resellers of Complainant’s water filters.
Perhaps more importantly, Complainant’s requested relief is beyond the Panel’s limited jurisdiction. The jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. This case involves contractual and commercial disputes beyond the Panel’s limited jurisdiction. More specifically, there exists an undisputed and ongoing contractual/business relationship between the parties that permitted Respondents to become authorized resellers of Complainant’s products and to register and use the Domain Names for those sales. The parties have been operating under that contractual relationship for approximately 16 years. Complainant, via an Affidavit denies this fact; an issue that will require factual discovery, not summary disposition.
At a minimum, Complainant has impliedly licensed to Respondents its OMNIFILTER Mark. The terms and conditions of that license, including the circumstances under which the license could be terminated and the rights of the parties after termination, also will require factual discovery by the parties. Again, the domain name dispute is ancillary to the contractual and commercial disputes between the Parties and is not appropriate for summary disposition by the Panel in this proceeding. Moreover, the existence of a license prevents Complainant from demonstrating that Respondents are using the Domain Names in bad faith and Respondents expressly deny using them in bad faith. Respondents request that this matter be dismissed with prejudice. 6. Discussion and Findings A. Consolidation of Complaint
Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”, section 4.11).
Based on the evidence provided by Complainant, the Panel is satisfied that Robert Cardana ultimately controls the Domain Names registered by B Card, Dovetail Distribution, Inc. and Perfect Privacy, LLC by and through his ownership of Cardana Internet Marketing, LLC, and that the consolidation is fair and equitable to the Parties. Thus, the Panel permits the consolidation of the Complaint. The Panel further notes that in their Response, Respondents stated that they had no objection to the consolidation. B. Jurisdiction
Respondents assert that Complainant’s requested relief is beyond the Panel’s limited jurisdiction – that is, that this case is not about the abusive registration of the Domain Names. Rather, Respondents claim that there exists an undisputed and ongoing contractual/business relationship between the parties that permitted Respondents to become authorized resellers of Complainant’s products and to register and use the Domain Names for those sales. According to Respondents, the parties have been operating under that contractual relationship for approximately 16 years. Respondents argue that based upon the assertions made and the issues in the case, factual discovery is necessary, not a summary disposition.
Complainant maintains that Respondents habitually misrepresent an affiliation with it, when no such affiliation exists. As per an affidavit of record provided by the territory account manager for Complainant, Respondents are not, and never have been, affiliated in a formal manner with Complainant. Complainant also claims that it has not had any contact with Respondents other than certain email correspondence commencing prior to April 18, 2017. Complainant claims that it has never expressly or impliedly authorized Respondents to use the OMNIFILTER Mark or the Domain Names.
The only evidence Respondents have provided in this case to show an alleged on going – 16-year – contractual relationship consists of five documents showing the sale of certain products by Complainant to Respondent Cardana Internet Marketing, which is identified on the documents as a division of Dovetail Distribution. Those sales were solely in 2009, so the few documents produced certainly do not support a 16-year relationship. Nor do they indicate any contractual relationship or terms and conditions between the parties beyond a simple obligation that anyone would have to pay for goods received. Furthermore, there is nothing in or about the sales documents that would indicate that Complainant authorized Respondents to be “authorized resellers” of its products. Nor is there anything about the documents that would indicate Complainant gave Respondents any rights in its OMNIFILTER Mark or the right to register the Domain Names whether as “authorized resellers” or for any other purpose. Thus, on the evidence presented by Respondents alone, there is no basis for the Panel to conclude that there is a contractual relationship as described by Respondents and, further, that the dispute between the parties is about such a contract, rather than a dispute that falls squarely within the Policy. The evidence that Complainant adduced further supports this conclusion.
Accordingly, the Panel has jurisdiction to decide this matter. C. Supplemental Filings
The Policy has no provisions for unsolicited filings by either party. While there are occasions when a Panel may request additional filings, the Panel did not do so here.
With respect to unsolicited filings, this Panel is of the view expressed in Gordon Sumner, p/k/a Sting v. Michael Urvan,WIPO Case No. D2000-0596, that unsolicited submissions will be considered only in exceptional circumstances, and only when the party filing the unsolicited submission explains the exceptional circumstances and why the material could not have been submitted with the Complaint or Response.
With regard to “Complainant’s Supplemental Response,” Complainant has made no showing of exceptional circumstances. Rather, the stated purpose of that document is to respond to statements and allegations that Respondents made in their filing. Insofar as Complainant and Respondents had discussions before this proceeding was commenced regarding the Domain Names, it appears that the parties may have discussed many of the issues Respondents raised in their filing and, thus, Complainant would have been in a position to address them in its initial filing. In fact, Complainant did not explain why the arguments in its first unsolicited submission could not have been submitted earlier particularly in view of the fact that it provided similar information earlier. Much of Complainant’s first supplemental submission was simply a reassertion of arguments made earlier. The only issue that may be an exception is that of laches (and waiver, estoppel, acquiescence) – the parties may not have addressed that issue before this proceeding. However, considering the dates that many of the Domain Names were registered and the date that this proceeding commenced, such an argument could have been anticipated. Nonetheless, Complainant did not provide the requisite reasons in its Supplemental Response for considering its unsolicited submission.
Because the Panel has not considered Complainant’s unsolicited Supplemental Response, nor did it invite any additional submissions from Respondents or Complainant, none of the supplemental filings have been considered. D. Identical or Confusingly Similar
Complainant holds rights in OMNIFILTER Mark by virtue of U.S. Registrations Nos. 1,608,999 (registered on August 7, 1990) and 4,172,435 (registered on July 10, 2012).
UDRP panels have consistently held that if a domain name “wholly incorporates a complainant’s trademark”, it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates,WIPO Case No. DCO2015-0001. The Domain Names , , , , , , , , , , and wholly incorporate the OMNIFILTER Mark; they are confusingly similar to that Mark. The Domain Name incorporates the dominant portion “Omni” of Complainant’s Mark. Adding alone or in combination descriptive terms such as “all”, “water”, “authorized”, “reseller”, a hyphen, an “s” to pluralize “filter”, “shop”, “water” dealers”, “-water”, “online”, “-cart”, and “only” is not sufficient to differentiate the Domain Names from the OMNIFILTER Mark (or the dominant OMNI portion of the Mark). Such terms are generally descriptive of water filtration or descriptive of a relationship that the public might believe exists between the parties (e.g., authorized seller, dealer).
Furthermore, the generic Top-Level Domain (“ gTLD”) is generally disregarded when determining whether a domain name is identical or confusingly similar. See, e.g., WIPO Overview 3.0, section 1.11.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. E. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondents may establish their rights or legitimate interests in the Domain Names, 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 Names or a name corresponding to the Domain Names 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 Names, 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 Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As indicated above (Section 6(B)) Respondents assert that they have been for about 16 years, and continue to be, authorized resellers of Complainant’s water filters. Thus, they claim to have registered the Domain Names as authorized resellers for Complainant and further that the registrations were made with the full knowledge and acquiescence of Complainant. As authorized resellers, Respondents claim to have been actively selling Complainant’s water filters utilizing the Domain Names since as early as October 17, 2000. Respondents claim that not until April 2017 did Complainant ever express any objection to such use. Respondents argue that because they have invested in and developed the Domain Names they have clearly developed rights and legitimate interests in them such that having them transferred would be a loss.
As pointed out by Complainant, there is no evidence that Respondents have been commonly known by the Domain Names, by the term “omnifilter”, or by the term “omni”. And as already determined above under Section 6(B), there is no evidence that Complainant is affiliated with Respondents in a contractual manner or that Complainant has expressly authorized Respondents to use the OMNIFILTER Mark or the Domain Names. Although many of the Domain Names have been registered for a considerable period of time, before Complainant took any legal action, Respondents have not provided evidence from which the Panel could conclude that Complainant impliedly authorized them to use the OMNIFILTER Mark or the Domain Names as an authorized dealer might be able to use them under a formal contract.
Furthermore before notice of this dispute Respondents were not using the Domain Names in connection with a bona fide offering of goods or services, nor were there any indications that Respondents were making “demonstrable preparations” to do so. The Domain Names were either directing users to webpages that listed sponsored links to various other webpages, offered competing goods on the webpages, or they were linked to Respondents’ other websites. Furthermore, as of June 8, 2017, many of the Domain Names directed users to webpages containing statements leading users to believe that the website operator is an authorized distributor for Complainant and its affiliated entities. Likewise, as of that same date, the
Domain Name directed users to a webpage, which misrepresents that Complainant can be contacted at one of Respondents’ telephone numbers and addresses. These examples show that Respondents are not making legitimate use of the Domain Names. Rather, they show that Respondents are seeking to capitalize on Complainant’s goodwill in its OMNIFILTER Mark by diverting Internet users who use that Mark to search for Complainant’s products. For the aforementioned reasons, the Panel concludes that the Respondents are not making legitimate noncommercial or fair use of the Domain Names.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. F. Registered and Used in Bad Faith
Insofar as the basis of Respondents’ jurisdictional argument is an alleged 16-year relationship with Complainant and the Domain Names include the entirety of Complainant’s OMNIFILTER Mark, or in one case, the dominant portion of the Mark, the Panel concludes that Respondents knew of the OMNIFILTER Mark when it registered each of the Domain Names.
Respondents have been using Domain Names that are confusingly similar to the OMNIFILTER Mark, without any right or legitimate interest to do so, to redirect the public away from Complainant’s website and to a variety of other commercial websites. These websites provide sponsored links to third parties’ commercial websites, refer Internet users back to Respondents’ own websites (selling competitive products), or offer third-party products (selling products that compete with Complainant). Furthermore, at least some of the websites contain statements leading the public to believe that the website operator is an authorized distributor for Complainant and its affiliated entities. Likewise, as of June 8, 2017, the directed users to a webpage, which misrepresents that Complainant can be contacted at one of Respondents’ telephone numbers and addresses. For all of these reasons, Respondents are using the Domain Names in bad faith.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. G. Laches
Respondents have raised the issue of laches based on the alleged delay between when the Domain Names were registered and when this proceeding was filed. Respondents further allege that they have invested in and developed the Domain Names and losing them will result in economic damage to Respondents.
Although courts in the United States have barred the recovery of damages on the theory of laches, they generally have not done so in trademark actions where the relief sought is prospective injunctive relief. See Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. As stated by that panel, “the remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches.” Id. The Panel sees no reason here to deviate from those cases. In any event it is not at all clear from Respondents’ submission how they will be damaged from not being able to use the Domain Names. Should the parties pursue court proceedings regarding these Domain Names, Complainant may have to answer for the length of time between when Respondents registered the Domain Names and when it prosecuted them for violating trademark law and/or 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 Domain Names, , , , , , , , , , , , and be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: August 15, 2017
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