WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair Pump Group, Inc. v. Milan Kovac / Privacy--Protect.org
Case No. D2011-2203
1. The Parties
The Complainant is Pentair Pump Group, Inc. of Golden Valley, Minnesota, United States of America, represented by Roetzel & Andress, United States of America.
The Respondent is Milan Kovac of Bratislava, Slovakia / Privacy--Protect.org of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <myerspumps.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2011. On December 15, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 20, 2012, 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 December 21, 2012 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 December 27, 2012.
On December 21, 2011, the Center transmitted an email communication to the parties in both Slovak and English regarding the language of the proceedings. On December 26, 2011, the Complainant confirmed its request that English be the language of the proceedings. The Respondent did not comment on the language of the proceedings by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2012.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 30, 2012. 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. The Identity of the Respondent and the Language of the Proceeding
Before analyzing the present case on the merits, the Panel should decide on the identity of the proper Respondent and the language of the proceeding.
The Complainant filed initially the Complaint against Privacy--Protect.org of Shanghai, China, the Registrant as identified in WhoIs at the time of filing the Complaint with the Center. After the Registrar disclosed the underlying registrant and contact information for the disputed domain name – which differed from the originally named Respondent– according to its standard procedure, the Center invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 27, 2011, requesting that this administrative proceeding is conducted against the individual confirmed by the Registrar as the Registrant of the disputed domain name, Milan Kovac of Bratislava, Slovakia. The Center notified both named Respondents on the present proceeding.
According to paragraph 4.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), in a UDRP case in which a privacy or proxy registration service is named as the respondent in a filed complaint (e.g., because the complainant was not aware of the identity of any underlying registrant) - and the concerned registrar in response to a request from the Center discloses an underlying registrant of the domain name that differs from the privacy or proxy registration service which appeared in the WhoIs at the time of filing of the complaint, ultimately the panel has discretion to determine the identity of the proper respondent.
The UDRP Rules define the respondent as the holder of a domain name registration against which a complaint is initiated.
The determination of the proper respondent may have serious practical consequences such as the mutual jurisdiction to which the parties agree to submit. Here the named initial Respondent is located in China, and the registrar-disclosed underlying registrant, the named Respondent in the amended Complaint, is located in Slovakia.
Accordingly, the Panel shall treat both of them, jointly, as the Respondent.
Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, 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 case. In this case, the language of the Registration Agreement is Slovak, while the Complainant requested that the English be the language of the proceeding. The Complainant’s main arguments were that the Respondent is familiar with this language having in view his history in registering domain names incorporating English words, that the content of the web page corresponding to the disputed domain name is in English and that translations would increase the Complainant’s costs substantially and disproportionately. The Respondent has been notified by the Center in both languages, English and Slovak, therefore the Panel is satisfied that the parties have been properly notified with regard to the procedure. No response was received and thus no comment on the language issue was put forward.
Consequently, the Panel accepts the Complainant’s request and decides that the language of this proceeding shall be English.
5. Factual Background
The business operated under the “F. E. Myers” was founded in 1870 in Ohio, United States, being acquired by an affiliate of the Complainant in 1986. According to the Complaint, the “F. E. Myers” division is part of the two billion USD water products group of the Complainant’s parent entity, Pentair, Inc. Under its MYERS trademark, the Complainant sells in the United States and in many other 100 countries goods such as pumps, parts therefore, and related goods.
The Complainant owns numerous trademark registrations for MYERS in many countries around the world, including in the European Union since 1996 and in China since 1997. All the MYERS trademarks are registered for goods in class 7, including inter alia pumps.
The Complainant operates its official websites at “www.myerspump.com” and “www.femyers.com”.
The disputed domain name was registered on April 2, 2009.
The Respondent Milan Kovac had registered several other domain names incorporating third parties trademarks and it was involved in nine other UDRP procedures as respondent, most of these were used for sponsored links (all except for the last one) and were decided in the favor of the complainants (see Intesa Sanpaolo S.p.A. v. Milan Kovac, WIPO Case No. D2010-1159 for the domain name <linksanpaolo.com>; Revlon Consumer Products Corporation vs. Privacy-Protect.org / Milan Kovac, WIPO Case No. D2010-1806 for the domain name <almaymakeup.com>; Comerica Incorporated vs. Milan Kovac, WIPO Case No. D2011-0894 for the domain name <comericawebbankinglogin.com>; BARCLAYS BANK PLC v. Milan Kovac/BARCLAYSCAPITALCAREERS.COM Privacy--Protect.org, WIPO Case No. D2011-1015 for the domain name <barclayscapitalcareers.com>; Specsavers International Healthcare Limited vs. Milan Kovac/WWWSPECSAVERS.COM Privacy--Protect.org, WIPO Case No. D2011-1084 for the domain name <wwwspecsavers.com>; Petroleo Brasileiro S.A – PETROBRAS vs. PrivacyProtect.org / Milan Kovac, WIPO Case No. D2011-1251 for the domain name <petrobraspremia.com>; B & Q plc v. Milan Kovac/Privacy--Protect.org, WIPO Case No. D2011-1420 for the domain name <wwwbandq.com>; John Greed Jewellery Limited vs. Privacy--Protect.org/Milan Kovac, WIPO Case No. D2011-1532 for the domain name <johngreed.com>; Caja de Seguros Reunidos vs. Milan Kovac/ SEGUROSCASER.COM Privacy--Protect.org, WIPO Case No. D2011-2052 for the domain name <seguroscaser.com>).
6. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The disputed domain name <myerspumps.com> is confusingly similar to its trademarks MYERS:
The Complainant owns registrations for MYERS trademark and similar trade name in the United States and worldwide. The Complainant has been using continuously and extensively its MYERS trademark since approximately 1870 in relation to sale of pumps and related goods. Also, Complainant holds the domain names <myerspump.com> since 1998 and <femyers.com> since 1996.
The disputed domain name is confusingly similar to the Complainant’s trademark, domain names and trade name as it incorporates the Complainant’s entire mark MYERS and merely adds the generic product word “pump” with an “s” to be in the plural form, making it plural which is not sufficient to differentiate the disputed domain name from the Complainant’s marks.
The Respondent has intentionally used the Complainant’s mark to attract Internet users who have merely mistyped the Complainant’s domain name <myerspump.com> by adding an “s” to “pump”.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent does not fall under the circumstances listed by paragraph 4(c) of the Policy. Rather, on the website at the disputed domain name, the Respondent diverts Internet users to a website displaying sponsored links offering for sale goods and services related to pumps including, inter alia, products of the Complainant’s competitors. Thus, the Respondent is seeking to capitalize the Complainant’s goodwill in its MYERS trademark, this diversion being in fact a violation of the Complainant’s trademark rights. Consequently, such use by the Respondent does not establish a right or legitimate interest in the disputed domain name.
The Complainant has never authorized the Respondent to use its MYERS trademark, is not affiliated with the Respondent in any manner and has not had any contact with the Respondent other than sending to the initially named Respondent (the proxy service provider) two letters requesting the transfer of the disputed domain name.
(iii) The disputed domain name was registered and is being used in bad faith:
Taking advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks, the disputed domain name has been used to intentionally redirect Internet users seeking information on Complainant’s goods to a website displaying links to unrelated content. The initial Respondent revealed by the search in the WhoIs database did not respond to the Complainant’s two cease and desist letters sent prior to commencing the present proceeding and the disputed domain name continued to be used in the same manner. The Respondent is illegitimately capitalizing on the Complainant’s goodwill in its trademark and is intentionally misleading consumers, luring them to other websites by making them believe that these other websites are somehow affiliated to or endorsed by the Complainant. Furthermore, at the time of filing the Complaint, the disputed domain name was connected to a website containing sponsored links promoting various goods, including products in direct competition with the Complainant’s products.
The Respondent did not reply to the Complainant’s contentions.
7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(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 does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the Respondent in bad faith.
The Respondent’s failure to respond does not automatically result in a decision in the favor of the Complainant, the latter must establish each of the three elements provided by paragraph 4(a) of the Policy, above listed.
Consequently, the Panel shall further analyze the eventual concurrence of these circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the MYERS trademark, holding registrations worldwide, including in the European Union and China where the Respondent seem to be located.
The dominant part of the disputed domain name, which also constitutes the prefix, reproduces the Complainant’s trademark in its entirety. In addition to this, the disputed domain name contains the word “pumps” which is closely related to the Complainant’s business.
Numerous UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Sanofi-aventis v. One Star Global, WIPO Case No. D2006-0583).
Furthermore, the Complainant operates under a very similar domain name, <myerspump.com>, the only difference being the plural of the word “pump” in the disputed domain name.
Therefore, an Internet user would most probably assume a connection with the Complainant when seeking information on a website operated under the disputed domain name <myerspumps.com>.
It is well established in decisions under the UDRP that indicators for Top Level Domains (e.g. “.com”, “.info”, “.net”, “.org”) are irrelevant to the consideration of confusing similarity between a trademark and a domain name.
For all the above, the Panel finds that the disputed domain name <myerspumps.com> is confusingly similar to the Complainant’s MYERS trademarks.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to its trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its MYERS trademarks. Therefore, in line with the UDRP precedents, the burden of production on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent failed to submit any response in the present procedure and did not react to the Complainant’s cease and desist letters, which were sent prior to commencing the present proceeding. The silence of the Respondent may support a finding, based on other relevant circumstances, that it has no rights or legitimate interests in respect of the disputed domain name. See also Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name.
In fact, at the time of filing the Complaint, the Respondent was using the disputed domain name containing the Complainant’s trademark protected for pumps and goods in class 7 in connection to a “link farm”, a website offering sponsored links for the sale of goods related to pumps containing, inter alia, products of the Complainant’s competitors. The pay-per-click (PPC) website would not normally fall within the bona fide use principles where such websites seek to take unfair advantage of the value of a trademark (See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 and Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787).
The Panel agrees that a registrant may have legitimate reasons to use a privacy service. On the other hand it may do so in an attempt to evade contact in the event of a domain name dispute (see also TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, WIPO Case No. D2006-1620; CCM IP S.A. v. Traverito Traverito, WIPO Case No. D2007-0542). In the present case, along with the rest of the evidence before the Panel, such use falls most likely in the second hypothesis.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and use of the disputed domain name.
When assessing the bad faith in the registration requirement, the following should be considered (1) whether the Respondent knew of the Complainant and its trademark, and (2) whether the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark (see Avon Products, Inc. v. Mary Ultes, WIPO Case No. D2009-0471).
The Complainant’s MYERS trademark is protected and used in more than 100 countries worldwide, the first registration being recorded back in 1937. Further, the Complainant is using the “F.E. Myers” trade name since 1870 and the domain name <myerspump.com> since 1998.
The disputed domain name <myerspumps.com> was registered in April 2009 and contains, along with the Complainant’s entire trademark, the word “pumps” which illustrates the Complainant’s main business.
Last but not least, given the history of precedents involving the Respondent Milan Kovac, the Panel concludes that the Respondent was familiar with the Complainant’s field of activity and its trademark at the time of registering the disputed domain name, and the Respondent targeted the Complainant to benefit from confusion generated by the similarity between the disputed domain name and the trademark.
Further, the Respondent is using the Complainant’s trademark for a web portal, the classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them.
Paragraph 4(b) of the Policy sets out a nonexclusive list of circumstances that evidence bad faith.
Paragraph 4(b)(iv) provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of bad faith.
Given the fact that the disputed domain name completely incorporates the Complainant’s trademark along with the term “pumps” which is descriptive of the Complainant’s business and is almost identical to one of the Complainant’s official websites (“www.myerspump.com”), indeed in this Panel’s view, an Internet user accessing the website corresponding to the disputed domain name <myerspumps.com> and on which webpage are listed links providing goods in connection with the Complainant’s activities may be confused and believe that it is a website held, controlled by the Complainant, or somehow affiliated or related to it. In this way, the Respondent is obtaining commercial gain by diverting Internet users searching for the Complainant and, in the same time, is disrupting the business of the Complainant by diverting its potential consumers to websites of the Complainant’s competitors.
In addition, paragraph 4(b)(ii) of the Policy lists the situation when the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 3.3 of the WIPO Overview 2.0 explains what a pattern of conduct involves multiple UDRP cases with similar fact situations. Here, the Respondent Milan Kovac has been involved in another nine UDRP cases, as listed above under Section 5. Factual Background. Most of these cases were similar situations: the domain names incorporated third parties trademarks and descriptive terms for complainant’s businesses and were used in connection to link farms.
Furthermore, according to the consensus view of the UDRP Panels (see paragraph 3.9 of the WIPO Overview 2.0), although use of a privacy or proxy registration service is not in and of itself an indication of bad faith, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith. The registrant’s use of a privacy service in combination with provision of incomplete contact information to such service may be indicative of bad faith registration and use. In the present case, the hard copy transmittals (Written Notice) could not be delivered to the Respondent as the address was inaccurate and thus, along with the rest of the evidence before the Panel, may be inferred that the Respondent’s intention was to conceal its true identity and therefore represents another evidence of bad faith registration and use of the disputed domain name.
The Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach. See also Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., supra.
For all these reasons, the Panel finds that the third element of the Policy is established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <myerspumps.com> be transferred to the Complainant.
Dated: February 13, 2012