The Complainant is Cornell Pump Company (Delaware Corporation and wholly-owned subsidiary of Roper Technologies, Inc.) of Clackamas, Oregon, United States of America ("United States"), internally-represented.
The Respondent is Emmanuel Dube, Conell of Johannesburg, South Africa. 2. The Domain Name and Registrar
The disputed domain name ("the Disputed Domain Name") is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 5, 2017. On October 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 12, 2017, 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.
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 the Respondent of the Complaint, and the proceedings commenced on October 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 16, 2017.
The Center appointed Isabel Davies as the sole panelist in this matter on December 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
The Complainant has been in business for 68 years in the pump industry and its pumps are sold and distributed internationally.
It has used its CORNELL mark since at least 1949.
The Complainant has had registered trademarks for the mark CORNELL and CORNELL and DESIGN in the United States since 1972 and 1983 respectively (see United States Registration No. 927,225, CORNELL, registered on January 18, 1972).
The Disputed Domain Name was registered June 16, 2017. The Disputed Domain Name previously resolved to a website copying that of the Complainant, giving the impression of being its official website. The Disputed Domain Name no longer resolves to an active website. 5. Parties' Contentions A. Complainant
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
The Complainant states that it has been in business 68 years and is a world leader in the pump industry having many different market applications resulting in pumps being sold and distributed in several countries throughout the world, including: South Africa, New Zealand, Australia, Belgium, Canada, Chile, France, the United Kingdom of Great Britain and Northern Ireland, Guatemala, India, Italy, Mexico, the Netherlands, Norway, Peru, the Russian Federation, Saudi Arabia, Singapore and the United Arab Emirates.
The Complainant states that since at least April 29, 1949 it has used in commerce the trademark CORNELL and that the CORNELL trademark is the subject of United States Trademark Registration No. 927,225 for the mark CORNELL as applied to centrifugal pumps, pump and engine units and pumping stations in Class 7, registered on January 18, 1972.
Since at least 1983, it states that it has used in commerce the CORNELL & DESIGN mark to promote its pump products and this is broadly recognized as a brand identifier for Cornell's pump products. The CORNELL & DESIGN mark is the subject of United States Trademark Registration No. 2,301,252 for the mark CORNELL & DESIGN as applied to centrifugal pumps, centrifugal pump and engine units and pumping systems comprising centrifugal pumps in Class 7, registered on December 21, 1999.
In addition, the Complainant owns the domain name registration for .
The Complainant states that on June 16, 2017, the Respondent registered the Disputed Domain Name which incorporates the Complainant's registered mark CORNELL with the addition of the descriptor "pump supply". The Respondent registered the Disputed Domain Name which incorporates the Complainant's trademark and entire domain name with the addition of the descriptor "supply".
The Complainant submits that it is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks (as held in, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254.)
Additionally, the Respondent states that in the contact information for the registration of the Disputed Domain Name, the name of the registrant organization is "Conell" and indicates the registrant email is "conellpumps@....com" and submits that "Conell" appears identical to "Cornell" as the omission of the letter "r" by the Respondent is barely discernible. The Complainant submits that this is an obvious and intentional act by the Respondent to create the false impression that the Complainant is the owner of the Disputed Domain Name or that it is affiliated with the Complainant.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name:
The Complainant states that, in conducting a reverse lookup of the physical addresses of the company locations listed by the Respondent, it was discovered that the addresses given are false, and no such "Cornell Pump Supply" offices exist at these locations and annexed evidence to support this.
The Complainant also states that it arranged for an investigator from its local counsel's office in South Africa posing as a prospective customer to visit the address of the office allegedly located in Ndabeni, Cape Town, South Africa. Upon arrival, the investigator discovered there is no physical structure of any type located at the alleged location. It is a false address. The investigator visited all of the surrounding businesses, none of which were aware of the existence of a "Cornell Pump Supply". The investigator also called the telephone number listed on the website. A woman answered the phone, and the investigator posing as a prospective customer requested directions to the store. The woman who answered was very vague and evasive, and repeatedly inquired as to the identity and company name of the caller. The woman then hung up. When the investigator called again, the woman hung up again, and did not answer any further calls.
Accordingly, the Complainant states, it is obvious that the Respondent has no intention of using the Disputed Domain Name in connection with bona fide sales of legitimate goods, but rather in a fraudulent and deceptive manner via use of the Disputed Domain Name, slavish copying of the Complainant's website, and unauthorized use of the Complainant's registered CORNELL marks for purposes of its own commercial gain. The Complainant submits that the Respondent is fraudulently trading on the goodwill established by the Complainant in its registered marks and intentionally attempting to mislead consumers and cites Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M",WIPO Case No. D2000-0847.
The Disputed Domain Name was registered and is being used in bad faith:
The Complainant states that the Disputed Domain Name was registered on June 16, 2017, in the name of Emmanuel Dube, domiciled in Johannesburg, South Africa. In the Disputed Domain Name registration information, the registrant's organization is listed as "Conell" and the registrant's email is listed as "conellpumps@....com", which the Complainant avers is an intentional and deceptive alteration of "Cornell".
Additionally, the Complainant submits, the Respondent slavishly copied the entire contents of the Complainant's website, including use of the Complainant's registered trademarks, copyrighted text and images, product brochures displaying the Complainant's pumps incorporating the Complainant's patented technology, and other proprietary information and material.
It states that the only information changed by the Respondent was with respect to sales contact information. In such circumstances, the Complainant submits, it is obvious that this choice of domain name by the Respondent has not been made by chance. The Respondent is fully aware of the existence of the Complainant and is intentionally attempting to falsely lead consumers to believe that the Disputed Domain Name and website are linked in some manner to the Complainant in order to trade on the fame and goodwill of the Complainant for its own commercial gain and cites Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:
(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Each of these elements will be addressed below.
The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a Party's failure to comply with any provision of or requirement under, the Rules, including the Respondent's failure to file a Response.
In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009)).
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is a world leader in the pump industry and has United States Trademarks registered for CORNELL and CORNELL & DESIGN since 1972 and 1999 respectively covering a range of pumps and associated goods and services and the domain name registration for .
It is also accepted by the Panel that on June 16, 2017, the Respondent registered the Disputed Domain Name which incorporates the Complainant's registered mark CORNELL with the addition of the descriptor "pump supply".
The Panel considers that the addition of descriptive terms to a trademark, including those that designate the goods or services with which the mark is used, does not avoid confusing similarity of domain names and trademarks as held in, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens,WIPO Case No. D2000-1254. Here, the Complainant's trademark CORNELL is clearly recognizable in the Disputed Domain Name .
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trademarks. B. Rights or Legitimate Interests
The Panel accepts that the addresses given by the Respondent are false, and no such "Cornell Pump Supply" offices exist at these locations.
The Panel accepts that the Respondent has no intention of using the Disputed Domain Name in connection with bona fide sales of legitimate goods, but has been using the Disputed Domain Name in a possibly fraudulent and deceptive manner via use of the Disputed Domain Name, slavish copying of the Complainant's website, and unauthorized use of the Complainant's registered CORNELL marks for purposes of its own commercial gain.
The Panel accepts that the Respondent was, at the time this Complaint was submitted and until suspension of the site, illicitly trading on the goodwill established by the Complainant in its registered marks and intentionally attempting to mislead consumers.
As the Respondent is merely trading off the goodwill associated with the Complainant's business, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. C Registered and Used in Bad Faith
As the Disputed Domain Name was registered with the registration information showing the registrant's organization listed as "Conell" and the registrant's email listed as "conellpumps@....com" the Panel finds that the Respondent has intentionally and deceptively used an alteration of "Cornell" and registered the Disputed Domain Name in bad faith. The Panel does not accept that "Conell" is identical to "Cornell", however, the Panel accepts that these are confusingly similar and that this is an obvious and intentional act by the Respondent to create the false impression that the Complainant is the owner of the Disputed Domain Name or that it is affiliated with the Complainant. The Panel accepts the Complainant's submission that this choice of domain name by the Respondent has not been made by chance.
The Panel finds that the Respondent's slavish copying of the entire contents of the Complainant's website, including use of the Complainant's registered trademarks, copyrighted text and images, product brochures displaying the Complainant's pumps incorporating the Complainant's patented technology, and other proprietary information and material, constitutes use in bad faith.
The Panel accepts that the Respondent was fully aware of the existence of the Complainant and is intentionally attempting to falsely lead consumers to believe that the Disputed Domain Name and website are linked in some manner to the Complainant in order to trade on the fame and goodwill of the Complainant for its own commercial gain. The panel in Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368 identified this as being use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Disputed Domain Name 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.
Isabel Davies
Sole Panelist
Date: December 7, 2017
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