The Complainant is Zodiac Pool Systems LLC, United States of America (“United States”), represented by McDermott Will & Emery LLP, United States.
The Respondent is 雷帅 (Lei Shuai), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2021, 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 October 27, 2021, 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 in English on October 29, 2021.
On October 27, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On October 29, 2021, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on November 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 26, 2021.
The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on December 7, 2021. 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 BackgroundThe Complainant is a company headquartered in the United States, and mainly commercializes swimming pool products and accessories. The Complainant provides evidence that it has used the Jandy brand for over 60 years to commercialize a line of pool, spa, and automation products including pumps, filters, heaters, lights, valves, water sanitizers, and the automation solutions to control the aforementioned products.
The Complainant also provides evidence that it owns a trademark portfolio protecting the mark JANDY, including, but not limited to, United States trademark registration number 1,410,155, registered on September 23, 1986, and Chinese trademark registration number 5977968, registered on February 7, 2010. The Complainant and its affiliated companies also own a portfolio of domain name registrations, including
The disputed domain name was registered on August 27, 2021, and is therefore of a later date than the abovementioned trademarks of the Complainant. The Complainant submits evidence that the disputed domain name directed to a website displaying pornographic and adult content. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage.
5. Parties’ Contentions A. ComplainantThe Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for JANDY, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.
The Complainant claims that its trademarks are distinctive and well known, and submits company and marketing information as well as evidence that its Jandy-branded pool products have been awarded prizes such as the “Pool & Hot Tub Alliance (“PHTA”) 2020 PHTA Awards of Excellence: Gold Winners”. The Complainant particularly contends that the Respondent is using the disputed domain name to direct Internet users to a website displaying pornographic content, that the Respondent is in no way connected to or licensed by the Complainant, that there are no justifications for the use of its trademarks in the disputed domain name, and that the Respondent’s abusive use of the JANDY trademark in the disputed domain name does not confer any rights or legitimate interests on it, and constitutes registration and use in bad faith.
The Complainant requests that the disputed domain name be transferred to it.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Preliminary Issue: Language of the ProceedingPursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
According to the Registrar’s verification response, the language of the Registration Agreement for the disputed domain name is Chinese. Nevertheless, the Complainant filed its Complaint and its amended Complaint in English, and requests that English be the language of the proceeding. The Panel notes that the Respondent did not comment on the language of the proceeding and did not submit any arguments on the merits of this proceeding.
In considering this request, the Panel has carefully reviewed all elements of this case, and deems the following elements particularly relevant: the Complainant's request that the language of the proceeding be English; the lack of comment on the language of the proceeding and the lack of response on the merits of this proceeding by the Respondent (the Panel notes that the Respondent was invited by the Center in a timely and correct manner to present its comments on the language of the proceeding and response in either Chinese or English, but chose not to do so); the fact that the disputed domain name contains the Complainant’s trademark in its entirety, as well as the term “inc” which is generally understood as the abbreviation for the English word “incorporated”; the fact that the disputed domain name is written in Latin letters and not in Chinese characters; and, finally, the fact that Chinese as the language of the proceeding could lead to unwarranted delay of the proceeding and additional costs for the Complainant. In view of all these elements, the Panel grants the Complainant’s request, and has decided that the language of this proceeding shall be English.
6.2. Discussion and Findings on the MeritsThe Policy requires the Complainant to prove three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence and arguments submitted, the Panel's findings are as follows:
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has shown that it has valid rights in the marks JANDY based on its intensive use and longstanding registration of the same as trademarks.
As to confusing similarity of the disputed domain name with the Complainant’s marks, the Panel considers that the disputed domain name consists of the combination of two elements, respectively the Complainant’s JANDY trademark combined with the term “inc”, which is commonly used in English as an abbreviation for the descriptive word “incorporated”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel concludes that the disputed domain name contains the entirety of the Complainant’s JANDY trademark, which remains easily recognizable in the disputed domain name. The Panel considers that the addition of the descriptive term “inc” therefore does not prevent a finding of confusing similarity. The Panel also notes that the applicable generic Top-Level Domain (“gTLD”) (“.com” in this case) is viewed as a standard registration requirement, and may as such be disregarded by the Panel, see in this regard the WIPO Overview 3.0, section 1.11.1.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.
B. Rights or Legitimate InterestsOn the basis of the evidence and arguments submitted, the Panel finds that the Complainant makes out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee, or distributor of the Complainant, the Respondent is not a bona fide provider of goods or services under the disputed domain name and is not making legitimate noncommercial use or fair use of the disputed domain name. The Panel also notes that the Respondent is not commonly known by the disputed domain name. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.
Moreover, upon reviewing of the facts, the Complainant provides evidence that the disputed domain name directed to an active webpage which contained pornographic content. In the Panel’s view, no rights or legitimate interests would derive from using a third party’s trademark to divert Internet users to a pornographic website, see in this regard also several prior UDRP decisions such as Laboratoires Thea v. Peiyi Zi,WIPO Case No. D2021-1045; L’Oréal v. Robert Caceres, Dollarviews,WIPO Case No. D2015-1200; Neste Oil Oyj v. Nesin Dmitry / Privacy Protection Service INC,WIPO Case No. D2014-0883, and Averitt Express, Inc. v. Protection of Private Person / Roman Emec,WIPO Case No. D2018-0249. However, the Panel notes that on the date of this decision, the disputed domain name directs to an inactive webpage. In this regard, the Panel finds that holding a domain name passively, without making any use of it, also does not confer any rights or legitimate interests on the Respondent (see earlier UDRP decisions such as Bollore SE v. 赵竹飞 (Zhao Zhu Fei),WIPO Case No. D2020-0691, and Vente-Privee.Com and Vente-Privee.com IP S.à.r.l. v. 崔郡 (jun cui),WIPO Case No. D2021-1685).
Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademark for JANDY in its entirety with the descriptive term “inc”, which is commonly used in English as an abbreviation for the word “incorporated”, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.
C. Registered and Used in Bad FaithThe Panel finds that the registration of the disputed domain name was clearly intended to take unfair advantage of the Complainant’s well-known trademarks for JANDY, by using such mark in its entirety in the disputed domain name to mislead and divert Internet users to the website at the disputed domain name. The Panel considers the disputed domain name to be so closely linked and so obviously connected to the Complainant and its trademark that the Respondent’s use of this domain name (incorporating such mark entirely) persuasively points toward the Respondent’s bad faith. Moreover, given the distinctiveness and well-established fame of the Complainant’s trademark, the Panel finds that the registration of the disputed domain name clearly targeted such well-known trademark, and that the Respondent therefore knew, or at least should have known, of the existence of the Complainant’s trademarks. In the Panel’s view, the preceding elements establish the bad faith of the Respondent in registering the disputed domain name.
As to use of the disputed domain name in bad faith, the Complainant provides evidence that the disputed domain name directed to an active webpage which contained pornographic content, which shows that the Respondent was abusing the Complainant’s trademarks to mislead and divert Internet users, for commercial gain, to its website containing pornographic content, and thereby also tarnished the Complainant’s marks, see in this regard also previous UDRP decisions such as Laboratoires Thea v. Peiyi Zi,WIPO Case No. D2021-1045; L’Oréal v. Robert Caceres, Dollarviews,WIPO Case No. D2015-1200; Red Bull GmbH v. Whois Agent, Domain Protection Services, Inc. / esco escortlar, escort sitesi,WIPO Case No. D2017-1639. However, on the date of this decision, the disputed domain name links to an inactive website. In this regard, the WIPO Overview 3.0, section 3.3 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”. The Panel has reviewed all elements of this case, and attributes particular relevance to the fact that the disputed domain name contains the entirety of the Complainant’s trademark, to the high degree of distinctiveness and well-established fame of the Complainant’s trademarks, and to the unlikelihood of any good faith use to which the disputed domain name may be put by the Respondent. In these circumstances, the Panel considers that the passive holding of the disputed domain name by the Respondent also constitutes use of the disputed domain name in bad faith. On the basis of the foregoing elements, the Panel finds that it has been demonstrated that the Respondent has used, and is using the disputed domain name in bad faith.
Finally, the Respondent failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.
7. DecisionFor 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
Deanna Wong Wai Man
Sole Panelist
Date: December 21, 2021