WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mueller Water Products, Inc., Mueller International, LLC and Mueller Co. LLC v. Asia Pacific Supply Co., Ltd.
Case No. D2016-0778
1. The Parties
The Complainant is Mueller Water Products, Inc., Mueller International, LLC and Mueller Co. LLC of Atlanta, Georgia, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Asia Pacific Supply Co., Ltd. of Bangkok, Thailand.
2. The Domain Name and Registrar
The disputed domain name <muellerflowcontrol.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2016. On April 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2016, 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.
The Center verified that the 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 of the Complaint, and the proceedings commenced on April 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2016.
The Center appointed Anna Carabelli as the sole panelist in this matter on May 30, 2016. 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
Established in 1857, the Complainant is a leading manufacturer and marketer of products and services under the trademark MUELLER. The Complainant’s products and services are used in the transmission, distribution and measurement of water.
The Complainant’s owns multiple trademark registrations for marks that consist of or contain “Mueller”; annexed to the Complaint is a list of all the Complainant’s registrations worldwide for the MUELLER trademark (see Annex 12).
The Complainant also owns the domain names <muellercompany.com>, <muellerwaterproducts.com> and <muellerwp.com> which were registered, respectively, on March 20, 2000, on March 29, 2005 and on January 26, 2007 (see Annex 7 and Annex 8).
The disputed domain name <muellerflowcontrol.com> was registered on May 21, 2013, as shown by a copy of the WhoIs database annexed to the Complaint (see Annex 1).
According to the evidence submitted by the Complainant, the disputed domain name was opening to a website offering flow control products for the industry and showing the following contact information: “Mueller Flow Control Company Limited, 921 Carolina Ave, PO Box 1568, Lumberton, North Carolina 28359” (see Annex 10).
The Panel notes that the disputed domain name presently directs users to a blank page displaying the following message: “This account has been suspended. Either the domain has been overused, or the reseller ran out of resources.”
5. Parties’ Contentions
The Complainant contends that:
- the Complainant’s trademark MUELLER is used in commerce since 1887 and it is registered since 1907 (see Annex 11);
- the disputed domain name is confusingly similar to the Complainant’s trademark MUELLER since it incorporates the trademark in its entirety, with the mere addition of the generic/descriptive expression “flow control” (which is, moreover, closely associated with the goods and services offered by the Complainant);
- the Respondent has no rights or legitimate interests in the disputed domain name since: a) the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the MUELLER trademark; b) the Respondent has never been commonly known by the disputed domain name; c) the Respondent is making a commercial use of the disputed domain name by offering for sale counterfeit water products bearing the MUELLER trademark without the Complainant’s authorization, falsely indicating that they are somehow affiliated, connected or associated with the Complainant (see Annex 9 and Annex 10);
- the disputed domain name has been registered and is being used in bad faith since the Respondent: a) registered the domain name primarily for the purpose of disrupting the Complainant’s business; b) 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 the Respondent’s website; c) was aware or should have been aware of the MUELLER trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The disputed domain name is identical or confusingly similar to the Complainant’s trademark or service mark; and
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns numerous trademark registrations for the trademark MUELLER in several countries, including the United States (see Annex 11 and Annex 12).
The disputed domain name reproduces the Complainant’s trademark in its entirety: according to several UDRP panel decisions the fact that a domain name wholly incorporates a complainant’s registered trademark is sufficient to establish identity or confusing similarity (see Stripe, Inc. v. Edward Benincase, WIPO Case No. D2016-0016; Virgin Enterprises Limited v. Guard Whois, WIPO Case No. D2015-2348; F. Hoffmann-La Roche AG v. Whois Privacy Protection Service by onamae.com / Fukutaro Kojima, WIPO Case No. D2015-1281; Six Continents Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249).
The addition of generic expressions (such us “flow control”) does not prevent the disputed domain name from being confusingly similar to the Complainant’s trademark (National Westminster Bank plc v. PrivacyProtect.org / Michael Switalski, WIPO Case No. D2012-1717; Goyard St-Honoré v. Domain ID Shield Service / Arif Cahyono, WIPO Case No. D2012-1158; Sanofi- Aventis v. Conciergebrain.com, WIPO Case No. D2005-0660; GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; Parfums Christian Dior v. 1 Netpower, Inc, WIPO Case No. D2000-0022; Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, WIPO Case No. D2000-0464).
On this issue the Panel further notices that the expression “flow control” is plainly descriptive and can likely be associated with the Complainant, considering that the Complainant operates in the field of valves production. Therefore, the combination with MUELLER is clearly confusing (Coutts & Co. v. Sande Skalnik, Patrick Harding, WIPO Case No. D2015-1590; Red Bull GmbH v. Yung Jake, WIPO Case No. D2014-2035; Advance Magazine Publishers Inc. v. 1&1 Internet, Inc. / Carlos Guevara, WIPO Case No. D2012-1424).
In light of the above and of the fact that the addition of the generic Top-Level Domain (“gTLD”) “.com” has no legal significance when comparing the disputed domain name and the Complainant’s trademark (see Coutts & Co. v. Sande Skalnik, Patrick Harding, WIPO Case No. D2015-1590; Philip Morris USA Inc. v. Sakaria Mohamoud Mussafah, WIPO Case No. D2014-1667; AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-208; Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548), the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorized, licensed or permitted the Respondent to use the trademark MUELLER and there is no evidence that the Respondent has been or is commonly known by the disputed domain name.
The Complainant asserts that the Respondent cannot demonstrate any legitimate non-commercial or fair use of the disputed domain name, nor a use in connection with a bona fide offering of goods and services, particularly because the Respondent is using the disputed domain name to sell counterfeit MUELLER goods.
In light of the above, the Complainant has established prima facie evidence that none of the three circumstances establishing legitimate interests or rights mentioned above applies. As stressed by many UDRP decisions, in such a case the burden of production shifts to Respondent to rebut evidence (see, among others, Boehringer Ingelheim Vetmedica GmbH v. Perfect Privacy, LLC / Denis Ryskin, WIPO Case No. D2016-0619; Arla Foods Amba v. Joan P Evans, WIPO Case No. D2016-0473; Barry Callebaut AG, Barry Callebaut Belgium NV v. VistaPrint Technologies Ltd, WIPO Case No. D2015-0819; Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).
By not submitting a Response, the Respondent has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests in the disputed domain under paragraph 4(c) of the Policy.
Accordingly, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the strong and international reputation and the distinctive nature of the MUELLER mark, the Panel finds that in all likelihood the Respondent should have been aware of the Complainant’s widely known trademark at the time it registered the disputed domain name (see Boehringer Ingelheim Vetmedica GmbH v. Perfect Privacy, LLC / Denis Ryskin, WIPO Case No. D2016-0619; Vertu Corporation Limited v. David Szn and Jun Luo, WIPO Case No. D2015-0185; Revlon Consumer Product Corp. v. Easy Weight Loss Info, WIPO Case No. D2010-0936; Hermes International SCA v. Cui ZhenHua, WIPO Case No. D2010-1743).
The addition in the disputed domain name of the generic expression “flow control” which is clearly associated with the Complainant’s activity, corroborates the above conclusion.
The evidence shows that the disputed domain name was being used by the Respondent in connection with a website offering for sale MUELLER branded products without the Complainant’s authorization and displaying information falsely indicating that the Respondent is somehow affiliated, connected or associated with the Complainant.
The Complainant also asserted that the products offered on the Respondent’s website are counterfeited MUELLER branded products and this assertion has not been rebutted by the Respondent. The sale of counterfeited goods under the Complainant’s trademark amounts to bad faith (see Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019; Hermes International SCA v. Cui Zhenhua, supra).
In light of this, the Panel finds that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The fact that the disputed domain name is not currently resolving to a webpage does not affect the above conclusion. It is an established principle that the lack of active use of a domain name does not as such prevent a finding of bad faith (see Arla Foods Amba v. Joan P Evans, WIPO Case No. D2016-0473; Vertu Corporation Limited v. David Szn and Jun Luo, supra; Accor, So Luxury HMC v. Youness Itsmail, WIPO Case No. D2015-0287; McGrigors LLP v. Fraser Coutts, WIPO Case No. DCO2011-0022).
According to paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), in the event a domain name is passively held, the Panel may examine all the circumstances of the case to determine whether the Respondent is acting in bad faith and in the Panel’s view the circumstances of the present case (namely, the reputation and distinctiveness of the Complainant’s trademark; no Response to the Complaint; impossibility to conceive a good faith use of the disputed domain name) clearly show the Respondent’s bad faith.
Accordingly, the Panel finds that the Complainant has established element 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 <muellerflowcontrol.com> be transferred to the Complainant.
Date: June 13, 2016