WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair, Inc. v. Jianfeng Wu / Wu Jianfeng
Case No. D2016-1892
1. The Parties
The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America ("United States" or "U.S."), represented by Roetzel & Andress LPA, United States.
The Respondent is Jianfeng Wu / Wu Jianfeng of Hefei, Anhui, China.
2. The Domain Name and Registrar
The disputed domain name <xjpentair.com> (the "Domain Name") is registered with Jiangsu Bangning Science & technology Co. Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 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.
On September 21, 2016, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint 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 both Chinese and English of the Complaint, and the proceedings commenced on September 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 18, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on October 20, 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
The Complainant (and its various subsidiaries and affiliates) is a manufacturer of water filters, pump systems, pool accessories, heating and lighting equipment. It has continuously and extensively used the trade mark PENTAIR in the U.S., China, and in numerous other countries worldwide, since at least as early as 1999, on and in connection with its products and services. The Complainant also uses Pentair as part of its business names. These include: "Pentair", "Pentair Water", "Pentair Residential Filtration", "Pentair Filtration Solutions", "Pentair Flow Technologies", "Pentair Pool Products", "Pentair Water Pool and Spa", and "Pentair Aquatic Systems".
The PENTAIR trade mark is registered in the U.S., China and many countries worldwide. The earliest U.S. trade mark submitted in evidence was registered on May 28, 2002. The Complainant registered the <pentair.com> domain name on October 17, 1996, and the <pentairwater.com> domain name on July 27, 1999.
The Domain Name was registered on May 26, 2016. It is not entirely clear from the evidence submitted what was on the website connected to the Domain Name prior to July 29, 2016. The Complainant sent a cease-and-desist letter to the Respondent on July 29, 2016. At that time, the Domain Name resolved to a web page that lists sponsored links to various other web pages, some of which sell third-party products. As of September 16, 2016, the Domain Name was connected to a similar web page that also lists sponsored links to various online gaming and online gambling web pages.
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to the trade mark PENTAIR, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
6.2 Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in the Complaint that the language of the proceeding should be English.
The Complainant contends that the Doman Name is in the English language. The website connected to the Domain Name includes English language content. The Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceeding and adjudication of this matter. The Respondent was given an opportunity to respond to the cease-and-desist letter and request that communications be in Chinese. However it did not respond.
The Panel accepts the Complainant's submissions regarding the language of the proceeding. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the nature of the present proceeding. The Respondent chose not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the PENTAIR trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine whether the trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant's distinctive trade mark PENTAIR in its entirety and the letters "xj" as a prefix. The addition of two letters as a prefix to the mark PENTAIR does nothing to dispel confusing similarity between the mark and the Domain Name.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain ("gTLD") suffix, in this case ".com".
The Panel finds that the Domain Name is confusingly similar to the Complainant's trade mark and the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent 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 trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of production always remaining on the complainant.
The Complainant contends that it has never authorized the Respondent to use the PENTAIR trade mark. Neither is it affiliated in any way with the Respondent. The Respondent is not commonly known by the Domain Name. The use of a domain name to provide sponsored links does not establish rights or legitimate interests in such domain name if such use violates the trade mark rights of a third party. Paragraph 2.6 of the WIPO Overview 2.0 states that:
"Panels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion."
The Panel finds that the Respondent's use of the Domain Name is not of a nature that may be considered bona fide for the purposes of this element of the Policy. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's PENTAIR trade marks when it registered the Domain Name. The fact that the Domain Name incorporating the Complainant's trade mark was registered without any authorization is evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name was in bad faith. The use of the Complainant's trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's products and services. The Domain Name is connected to website with sponsored links. This shows an intention on the part of the Respondent to capture Internet users searching for the Complainant, and then redirecting such users to websites displaying unrelated content including gambling sites to profit from such confusion. Further, the Respondent failed to stop its activities after receiving the Complainant's cease-and-desist letter.
The above is indicative bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name are in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <xjpentair.com> be transferred to the Complainant.
Date: November 7, 2016