The Complainant is Rheem Manufacturing Company, United States of America (“United States” or “U.S.”), represented by Troutman Pepper Hamilton Sanders LLP, United States.
The Respondent is WhoisGuard, Inc., Panama / Gabriella Garlo, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 11, 2020. On August 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 11, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 12, 2020 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 August 17, 2020. 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 the Uniform Domain Name Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for the 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 August 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2020. The Center appointed Jon Lang as the sole panelist in this matter on September 16, 2020. 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 is a U.S., privately held manufacturer that produces residential and commercial water heaters and boilers, as well as heating, ventilating and air conditioning (HVAC) equipment. Founded in 1925, the Complainant has pioneered some of the most innovative advancements in heating, cooling, and water heating and is today a leading manufacturer of water-heating products in North America, with products available in over 50 countries. It is the lawful owner of all right, title and interest in the common law and registered trademarks and service mark RHEEM (the “RHEEM Mark”) and all the variants thereof, and exclusively uses the Mark. The RHEEM Mark is registered throughout the world including in the U.S., for instance, U.S. Registration No. 669,287 (for RHEEM) with a registration date of November 4, 1958. The Complainant also owns the domain name registration for The Respondent registered the Domain Name on July 28, 2020. The Domain Name resolves to a website displaying pay-per-click links which are related to products of the Complainant as well as products and/or services of third parties. 5. Parties’ Contentions A. Complainant The following is a brief summary of the main assertions of the Complainant. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Continuously used since at least 1925, the RHEEM Mark has served as a distinctive identifier associated with the Complainant for nearly a century. The Complainant acquired rights in the Mark many years before the Respondent created the intentionally misleading Domain Name. As a result of the Complainant’s exclusive use and substantial advertising and promotion of its Mark throughout the world, the Mark has acquired strong commercial recognition and goodwill, and has come to symbolize the superior quality of products and services provided exclusively by the Complainant and its authorized licensees. The RHEEM Mark is a highly distinctive and renowned mark. The RHEEM Mark is adopted in its entirety as the dominant and sole portion of the Domain Name and there can be no doubt that there is an inherent risk of confusion created by the Domain Name’s unauthorized inclusion of the RHEEM Mark. Because the RHEEM Mark is the dominant and distinctive element of the Domain Name, the Domain Name strongly conveys the impression of sponsorship by or association with the Complainant. The Respondent has chosen the Domain Name for the very purpose of conveying such a false impression to the public and to attract viewers to the Domain Name under the mistaken impression that they are accessing a website owned and operated, or authorized by the Complainant. The Respondent has no rights or legitimate interests in respect of the Domain Name. The RHEEM Mark is famous and has no meaning other than to identify the Complainant as a source of its products and services. The Respondent is not a licensee of the Complainant or authorized to use the RHEEM Mark for any purpose. The Respondent owns no trademark applications or registrations for “Rheem” or any variants of the Domain Name, and is not commonly known as “Rheem”. The Domain Name currently resolves to a page which unlawfully uses the RHEEM Mark, and lists advertisements for a range of RHEEM water heater and HVAC products, and installation and repair services. The Respondent is thus using the fame of the RHEEM Mark to siphon off traffic to its site, which intentionally seeks to confuse consumers into believing that the page is affiliated with the Complainant. There is no legitimate basis for the Respondent’s registration or use of the Domain Name. The Domain Name was registered and is being used in bad faith. Paragraph 4(b)(iv) of the Policy provides that a complainant may establish that the registration and use of a domain name was in bad faith by showing (amongst the other non-exhaustive list of circumstances indicative of bad faith in paragraph 4(b) of the Policy), that by using the domain name, the respondent attempted to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s marks as to the source of the website or of a product or service on that website. In addition to the non-exhaustive list of circumstances in paragraph 4(b) of the Policy, a complainant may demonstrate bad faith in other ways too. The Complainant’s RHEEM Mark is famous, has been used for nearly 100 years throughout the world and uniquely identifies the Complainant. The Mark has no meaning in any language. It is unique, such that the Respondent could not have devised the mark “Rheem” on its own. The Respondent knowingly registered the Domain Name containing an exact reproduction of the Complainant’s Mark and redirected website users to the Respondent’s website which displays advertisements for identical products and related services offered by the Complainant using the RHEEM Mark. The fact that the Domain Name resolves to a page that displays advertisements for a range of water heater and HVAC products, and installation and repair services identical to the Complainant’s goods and services, demonstrates that the Respondent is intentionally attempting to mislead consumers into thinking that its website is affiliated or endorsed by the Complainant. There are no plausible circumstances in which the Respondent could legitimately register and use the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in its RHEEM mark. Ignoring the generic Top Level Domain (“gTLD”) “.support” (as the Panel may do for comparison purposes), the Domain Name consists only of the RHEEM Mark and nothing more. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The RHEEM Mark is clearly recognizable within the Domain Name – the gTLD “.support” aside, it is the only element of the Domain Name. The Panel finds that the Domain Name is identical to the RHEEM Mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. The Domain Name resolves to what appears to be a commercial site, and use cannot be said to be fair in circumstances where the Domain Name is identical to the RHEEM Mark and will therefore inevitably give rise to the distinct possibility that Internet users may be led to believe, wrongly, that the Respondent’s website is that of the Complainant, or at least that there is some connection between the two. This is particularly so given the nature of the advertisements and links on the Respondent’s site which, from a review of the pages annexed to the Complaint, are related not just to products of the Complainant but also products and/or services of others. Any noncommercial or fair use must be without intent to mislead, yet the Domain Name, consisting only of the RHEEM Mark, is inherently misleading. Moreover, the gTLD “.support”, a relatively new extension and indicative of the online location of a business’ customer support page will, if anything, enhance the risk of confusion amongst Internet users and of them being misled. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Given the likelihood of a false impression being created by any use of the Domain Name by the Respondent, it is unlikely that any offering of any kind would be treated as bona fide. There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is clear to the Panel, given the nature of the Domain Name being identical to the Complainant’s RHEEM Mark and the Respondent’s website, that it knew of the Complainant and its RHEEM Mark at the time of registration of the Domain Name. The Domain Name incorporates entirely the RHEEM Mark and any use of it will inevitably create a risk of misleading Internet users into believing that the Domain Name is in fact owned by the Complainant, or that any website to which it resolves is the website of the Complainant or somehow associated with the Complainant. As mentioned earlier, the “.support” gTLD may well enhance the risk of confusion amongst Internet users and of them being misled. One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances described in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website (or other location) or of products or services on it. The facts of this Complaint mirror these circumstances. It is clear that the Respondent has sought to take unfair advantage of the Complainant’s RHEEM Mark. The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Jon Lang
Sole Panelist
Date: October 8, 2020
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