WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair Water Pool and Spa, Inc. v. Fundacion Private Whois / PPA Media Services
Case No. D2013-1551
1. The Parties
The Complainant is Pentair Water Pool and Spa, Inc. of Sanford, North Carolina, United States of America, represented by Roetzel & Andress LPA, United States of America.
The Respondent is Fundacion Private Whois, Domain Administrator of Panama, Panama / PPA Media Services of Santiago, Chile.
2. The Domain Name and Registrar
The disputed domain name <wwwpentairpool.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2013. On September 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 2013, 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 the same day 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 September 19, 2013.
The Center verified that 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 September 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 17, 2013.
The Center appointed Daniel Kraus as the sole panelist in this matter on November 1, 2013. 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 (and/or its parent company, Pentair, Inc.) owns rights in the United Staes of Americaand in numerous other countries worldwide in and to the PENTAIR POOL PRODUCTS trademark, the PENTAIR WATER POOL AND SPA trademark, and other similar trademarks and trade names (collectively hereinafter the “PENTAIR POOL Trademarks”) for use on and in connection with pool and spa related goods, including without limitation, pumps, filters, heaters, lighting, automation and controls, and cleaners. In addition, the Complainant – through its parent company, Pentair, Inc. – owns the <pentairpool.com> domain name, as detailed in the following paragraphs. Furthermore, the Complainant uses or has used the following business names: “Pentair Pool Products”, “Pentair Water Pool and Spa”, and “Pentair Aquatic Systems”.
The Complainant and its predecessors have continuously and extensively used the PENTAIR POOL trademarks on and in connection with the sale of pool and spa related goods, including without limitation, pumps, filters, heaters, lighting, automation and controls, and cleaners, since at least as early as September 2000.
The disputed domain name has been registered on January 18, 2006.
5. Parties’ Contentions
The Complainant argues that the disputed domain name <wwwpentairpool.com> is confusingly similar to the Complainant’s trademarks, trade names, and domain name. The Respondent has intentionally used the Complainant’s PENTAIR POOL trademarks in order to attract Internet users who have merely mistyped the Complainant’s URL address by unintentionally omitting the period after the generic “www” URL designation. In this regard, the Respondent is engaging in the prohibited practice of “typosquatting”, which results in two confusingly similar domain names.
The Respondents further have no rights or legitimate interests in respect of the disputed domain name that is the subject of this Complaint.
The Respondent is not using <wwwpentairpool.com> in connection with a bona fide offering of goods or services, nor is there any indication that the Respondent is making “demonstrable preparations to use” the disputed domain name in connection with a bona fide offering of goods or services. Rather, the “www.wwwpentairpool.com” website diverts Internet users to sponsored links contained on its site. Most of these sponsored links are for the sale of goods and services related to pools and spas, and some appear to direct to websites featuring some of the Complainant’s competitors. Rather than a legitimate use, the Respondent is seeking to capitalize on the Complainant’s goodwill in its PENTAIR POOL trademarks by diverting Internet users using those trademarks to search for the Complainant’s products. The Respondent’s diversion is a violation of the Complainant’s trademark rights, and such use by the Respondent does not establish a right or legitimate interest in the disputed domain name .
Likewise, upon information and belief, the Respondent is commonly known by the disputed domain name <wwwpentairpool>. Moreover, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. The Complainant is not affiliated with the Respondent in any manner and has not had any contact with the Respondent other than sending the Respondent a cease and desist letter on May 3, 2013.
Finally, the Complainant argues that the disputed domain name should be considered as having been registered and used in bad faith by the Respondent.
First, the Respondent has, by using the disputed domain name , intentionally attempted to redirect Internet users seeking information on the Complainant’s pool and spa products to a web site displaying links to unrelated content, including that of the Complainant’s competitors, commercially benefiting from the likelihood of confusion created through the use of the Complainant’s trademark.
Second, the Respondent’s bad faith is further evidenced by that fact that the Respondent received a cease and desist letter from the Complainant and did not respond to it.
Third, the Respondent’s bad faith is further evidenced by use of the disputed domain name to intentionally mislead consumers, luring them to other websites by making them believe that these other websites are affiliated with or endorsed by the Complainant. As a result, the Respondent is illegitimately capitalizing on the Complainant’s PENTAIR POOL trademarks and brand.
Fourth, the Respondent’s bad faith is further evidenced by the fact that many of the third party website links at the website located at the disputed domain name offer goods that compete with those of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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.
A. Identical or Confusingly Similar
The Complainant has clearly shown that it has rights in the PENTAIR POOL PRODUCTS trademarks registered in several countries.
The disputed domain name incorporates the entire distinctive part of the PENTAIR POOL PRODUCTS trademark to which only the generic part “product” has been taken away. The only addition is the generic Top Level Domain “.com” (gTLD) and the prefix “www”. The subtraction of the descriptive element “products” and the addition of the gTLD suffix does not alter or diminish in any way the confusing similarity between the Complainant’s PENTAIR POOL PRODUCTS trademarks and the disputed domain name.
The Panel finds that the Complainant has rights in the PENTAIR POOL PRODUCTS trademarks and the disputed domain name is confusingly similar to this trademark.
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that (1) it has not licensed or otherwise authorized the Respondent to use the PENTAIR POOL PRODUCTS trademarks or to incorporate them into a domain name; (2) that, given the extensive use of the Complainant’s marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (3) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 web site or location or of a product or service on its website or location.
The Complainant has demonstrated the existence and use of its trademarks, that the disputed domain name incorporates them and that the Respondent has no relationship to the PENTAIR POOL PRODUCTS trademarks.
In several decisions under the Policy involving disputes brought against the same Respondent as in this proceeding, previous panels found bad faith under paragraph 4(b)(iii) of the Policy. The Complainant submits that it is prevented from registering the disputed domain name itself. It further submits that the Respondent follows a “pattern of conduct” as demonstrated by the findings on bad faith in these previous UDRP disputes. Among these previous cases decided against the Respondent are the following: Inter-Continental Hotels Corp. v. Fundacion Private Whois domain Administrator and PPA Media Services, WIPO Case No. D2012-1095; Homer TLC, Inc. v. PPA Media Services / Ryan G Foo, NAF Claim No. FA1416637; Petroleo Brasileiro S.A. – Petrobras v. PPA Media Services, Ryan G Foo / Private Whois, WIPO Case No. D2012-0655; El Palacio de Hierro S.A. de C.V. v. Private Whois palaciodehierro.com / PPA Media Services, Ryan G Foo, WIPO Case No. D2012-0185; EasyGroup IP Licensing Limited v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, WIPO Case No. D2012-1093; Dyson Limited v. PPA Media Services, Ryan G Foo (also known as Fundacion Private Whois, Domain Administrator), WIPO Case No. D2012-0897; Kraft Food Group Brands LLC and Kraft Foods Global Brands, LLC v. Fundacion Private Whois / PPA Media Services, WIPO Case No. D2013-0634.
It is clear to this Panel that the Respondent is using the trademark elements PENTAIR POOL to attract Internet users to its website “www.wwwpentairpool.com” so that the Respondent can generate “pay-per-click” revenue. Thus, the Respondent is trying to benefit from the confusion created by the presence of the expression “Pentair” within the disputed domain name to intentionally attempt to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s PENTAIR POOL PRODUCTS trademarks as to the source, sponsorship, affiliation or endorsement of its website.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.
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 <wwwpentairpool.com> be transferred to the Complainant.
Date: November 15, 2013