The Complainant is Johnson Controls, Inc. of Boca Raton, Florida, United States of America ("United States"), represented by Gevers Legal NV, Belgium.
The Respondent is ITT Holding B.V. of Amsterdam, Netherlands. 2. The Domain Name and Registrar
The disputed domain name is registered with Mijn InternetOplossing B.V. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 16, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2018, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on July 20, 2018. A second amended Complaint was received by email on July 25, 2018.
The Center verified that the Complaint together with the amended Complaints satisfy 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 July 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2018. On July 19, 2018, the Respondent sent an email communication to the Center. The Respondent did not submit any response. Accordingly, the Center notified the Parties of the Commencement of Panel Appointment Process on August 16, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 29, 2018. 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.
On August 30, 2018, the Respondent sent a Response to the Center followed by a request for a postponement of six weeks to allow an additional answer and documents to be filed. The Respondent also made reference to another proceeding between the parties and submitted that the Decisions in the two sets of proceedings should be coordinated.
The Panel notes that the Respondent's email to the Center dated July 19, 2018, stated: "STOP SENDING YOUR EMAILS." The Panel also notes that the Respondent has offered no reason, let alone any submission of exceptional circumstances, as to why its Response should have been filed out of time. Efficient administration of proceedings under the UDRP requires that time limits be adhered to outside of exceptional circumstances. Since it is clear that the Respondent was aware of the proceedings and no exceptional circumstances have been shown, the Panel declines to admit the Respondent's late Response.
The Panel also declines the Respondent's application for a postponement of the Decision in this case. The proceeding has been duly submitted for a Panel Decision and must proceed to a Decision unless the Parties provide written notice of a request to suspend the proceedings because the parties are discussing settlement (paragraph 17 of the Rules). No such notice has been provided. 4. Factual Background
The Complainant is a company organized under the laws of Wisconsin, United States. It is a supplier of diversified technology products including heating, ventilation, and air-conditioning equipment for buildings.
The Complainant is the owner of trademark registrations for the mark PENN, including European Union Trade Mark number 009778606 for the word mark PENN, registered on November 11, 2011, in Classes 7, 9, and 11, for goods and services which include various types of controls.
The disputed domain name was registered on November 21, 2012.
The Complainant produces evidence that the disputed domain name has resolved to a website at "www.". The website is headed "Penn Controls" and includes a section headed "Penn Controls" which contains several paragraphs of information about the Complainant and its products and invites visitors to contact the Respondent's sales department for more information about those products. The website goes on to include information about numerous other suppliers of products and components and states that the Respondent is a supplier of those products. 5. Parties' Contentions A. Complainant
The Complainant states that it is an industrial leader, serving customers in more than 150 countries and employing 170,000 individuals in over 1,300 locations worldwide. It states that, in addition to its registered trademark rights, it owns the trading name "Johnson Controls", which is commonly used in correspondence and on its website at "".
The Complainant submits that the disputed domain name is identical or confusingly similar to its registered trademark PENN. It states that the disputed domain name comprises that mark together with the descriptive term "controls", which only adds to the likelihood of confusion with its trademark.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never authorized the Respondent to use its trademark PENN, that the Respondent has no independent rights in that name and has not been commonly known by it, and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain name. In particular, the Complainant submits that the Respondent is using the disputed domain name to attract Internet users to its website by misrepresenting that it is an authorized supplier of the Complainant's goods, and that it offers products from the Complainant's direct competitors on that website.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that the Respondent was obviously aware of the Complainant and its products because the Respondent expressly refers to those products, among others, on its website. It also states that it had a prior trading relationship with the Respondent. The Complainant further contends that the Respondent is using the disputed domain name to attract Internet users to its website for commercial gain, including the sale of competing products, by misrepresenting that it is an authorized distributor of the Complainant.
The Complainant requests the transfer of the disputed domain name. B. Respondent
As discussed above, the Respondent did not submit an admissible Response in this proceeding. 6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Even though no admissible Response has been filed in this case, the Complainant must still demonstrate to the satisfaction of the Panel that each of the above elements is present. A. Identical or Confusingly Similar
The Complainant has established that it is the owner of the registered trademark PENN for goods and services which include controls of various types. The Panel also accepts that the Complainant has an established reputation for the supply of goods including controls under the PENN trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity. The disputed domain name comprises the term "penn" together with a hyphen and the dictionary term "controls", which in the view of the Panel does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
It is clear on the evidence before the Panel that the Respondent has used the disputed domain name for the purpose of a website which makes direct reference to the Complainant's goods and services, but also offers the goods and services of other suppliers, which the Panel accepts are the Complainant's competitors.
In certain limited circumstances, a reseller of trademarked goods or services may legitimately incorporate that trademark into a domain name used for the resale of the goods or services in question (see, e.g., section 2.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). However, those circumstances do not include those where the domain name is inherently deceptive, or those where the domain name is used to sell goods or services other than those offered by the trademark owner.
In this case, the Panel considers that the disputed domain name is inherently deceptive: it comprises the Complainant's trademark together with a product with which the Complainant is closely associated, and is therefore likely to lead a significant number of Internet users to believe that it is operated or authorized by the Complainant. The Panel also finds that the Respondent is using the disputed domain name to attract Internet users to a website where it offers the Complainant's competitors' products for sale. This takes unfair advantage of the goodwill that attaches to the Complainant's trademark and does not provide the Respondent with rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Panel accepts the Complainant's evidence that the Respondent knew of, and intended the disputed domain name to refer to, the Complainant and its products: as much is clear, not least, from the fact that the Respondent makes prominent reference to those products on its website. Furthermore, the Panel finds that, by using the disputed domain name, which is inherently deceptive, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website (paragraph 4(b)(iv) of the Policy). Furthermore, the Respondent uses that website to offer products which directly compete with those of the Complainant.
The Panel therefore finds that the disputed domain name has been registered and is being used 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.
Steven A. Maier
Sole Panelist
Date: September 4, 2018
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