WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair Flow Service AG v. Michael Evingham
Case No. D2017-0966
1. The Parties
The Complainant is Pentair Flow Service AG of Schaffhausen, Switzerland, represented by Roetzel & Andress LPA, United States of America ("United States").
The Respondent is Michael Evingham of Laguna Niguel, California, United States.
2. The Domain Name and Registrar
The disputed domain names <pentairboosterpumps.com>, <pentairpoolpumps.com>, <pentairsolarboosterpumps.com>, <pentairsolarclearner.com>, <pentairsolarclearners.com>, <pentairsolar.com>, <pentairsolarflo.com>, <pentairsolarpool.com>, <pentairsolarpoolpumps.com> <pentairsolarpumps.com>, <pentairsolflo.com> and <pentairsolflopumps.com> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 15, 2017. On May 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 16, 2017, 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 May 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 19, 2017.
The Center appointed Jon Lang as the sole panelist in this matter on June 22, 2017. 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) owns unregistered and registered trademark rights in the PENTAIR Trademark and other similar trademarks and trade names containing or comprising the term "Pentair" (hereafter the "PENTAIR Trademarks"), as well applications for such registered trademarks, in the United States and in numerous other countries worldwide, for instance, United States word mark (for PENTAIR), Registration No: 2,573,714 (Registration date, May 28, 2002).
The Complainant (and its various subsidiaries, affiliates, and predecessors-in-interest) uses or has used the following business names, among others, containing or comprising the term "Pentair": "Pentair", "Pentair Water", "Pentair Residential Filtration", "Pentair Filtration Solutions", "Pentair Flow Technologies", "Pentair Pool Products", "Pentair Water Pool and Spa", "Pentair Aquatic Systems", and "Pentair Aquatic Eco-Systems".
The Complainant (through its various subsidiaries and affiliates) owns the domain names <pentair.com> (registered on October 17, 1996), <pentairwater.com> (registered on July 27, 1999), and <pentairpool.com> (registered on August 30, 1999), among others.
The disputed domain names (hereafter the "Domain Names") were registered as follows:
<pentairsolarflo.com>, registered on February 10, 2017
<pentairsolarpool.com>, registered on February 10, 2017
<pentairsolarpoolpumps.com>, registered on February 10, 2017
<pentairsolarpumps.com>, registered on February 10, 2017
<pentairsolflo.com>, registered on February 10, 2017
<pentairsolflopumps.com>, registered on February 10, 2017
<pentairboosterpumps.com>, registered on March 19, 2017
<pentairpoolpumps.com>, registered on March 19, 2017
<pentairsolar.com>, registered on March 19, 2017
<pentairsolarboosterpumps.com>, registered on March 19, 2017
<pentairsolarclearner.com>, registered on March 19, 2017
<pentairsolarclearners.com>, registered on March 19, 2017
The Domain Names resolve to Registrar parking pages, which contain links resolving to the websites of the Complainant's competitors.
On March 7, 2017, the Complainant sent a cease-and-desist letter to the Respondent but received no response.
5. Parties' Contentions
The following is a brief summary of the Complainant's contentions:
The Complainant (and its various subsidiaries, affiliates, and predecessors-in-interest) has continuously and extensively used the PENTAIR Trademarks in the United States and in numerous other countries worldwide, since at least as early as 1999, on and in connection with the sale of numerous goods and services including, without limitation, pumps (including pumps for use with swimming pools); water storage tanks; water filters (including filters for use with swimming pools); water filtration, treatment, reverse osmosis, softening, deionization, desalination, sterilization, and storage equipment and systems (including those for use with swimming pools); pool and spa vacuums and cleaners; hydraulic controls; spraying equipment; valves; automatic valves; impellers; electrical controllers and remote controllers (including those for use with swimming pool equipment); metal and non-metal cabinets and sheet metal boxes for use in housing controls and electrical and electronic equipment; water heaters; pool, spa, and landscape lighting equipment; thermal management systems and equipment; and fiberglass, plastic, and non-metallic containers for industrial, residential, and commercial use.
As such, the Complainant (and its various subsidiaries and affiliates) has established significant common law and registered rights in and to the PENTAIR Trademarks in the United States and elsewhere around the world.
The Domain Names are confusingly similar to the Complainant's PENTAIR Trademarks
By reference to Paragraph 4(a)(i) of the Policy, the Complainant contends as follows:
- the Domain Names incorporate entirely the term "Pentair", with the addition of various combinations of the following descriptive terms, which either describe, or are the common commercial names for, the Complainant's goods: solar, flo, pool, pumps, pool pumps, booster pumps, clearner, and clearners (clearner and clearners being misspellings of "cleaner" and "cleaners"). Such descriptive additions are not sufficient to differentiate or distinguish the Domain Names from the Complainant's PENTAIR Trademarks and <pentair.com>, <pentairwater.com>, and <pentairpool.com> domain names.
- the Domain Names are closely and confusingly similar, both phonetically and visually, to the Complainant's <pentair.com>, <pentairwater.com>, and <pentairpool.com> domain names, and the Complainant's numerous business and trade names comprising the PENTAIR Trademarks.
- the Domain Names are substantially identical, and thus confusingly similar phonetically, visually, and in overall commercial impression, to the Complainant's numerous business names and trade names that contain or comprise the PENTAIR Trademarks.
The Respondent has no rights or legitimate interests in the Domain Names
By reference to Paragraph 4(c) of the Policy (which sets out a number of circumstances which, if proved, will demonstrate that a respondent has rights to, or legitimate interests in a disputed domain), the Complainant contends as follows:
- prior to notice of this dispute (by way of the Complainant's cease-and-desist letter dated March 7, 2017), the Respondent was not using any of the Domain Names in connection with a bona fide offering of goods or services and nor was there any indication that the Respondent was making "demonstrable preparations" to do so, the Domain Names at that time merely directing Internet users to webpages that listed sponsored links to various other web pages, some of which offered goods and services competitive with, or similar or related to, those of the Complainant.
- as at May 15, 2017, each of the Domain Names continue to direct to webpages containing sponsored links directing users to other webpages listing related links to various other web pages, some of which sell third-party products competitive with or similar or related to those of the Complainant, e.g., the second sponsored link ("in Ground Pool Pump – Free Shipping & Handling") on the webpage to which <pentairsolarflo.com>, <pentairsolflo.com> and <pentairsolflopumps.com> resolve, which directs Internet users to a page which offers and sells Hayward and Harris pool pumps which are directly competitive with the Complainant's pool pumps.
- rather than a legitimate use, the Respondent is instead seeking to capitalize on the Complainant's goodwill in its PENTAIR Trademarks by diverting Internet users who use those trademarks to search for the Complainant's products, such diversion being a violation of the Complainant's trademark rights and cannot establish a right or legitimate interest in any of the Domain Names.
- given the Respondent's use of the Domain Names to provide sponsored links to third parties' commercial websites, the Respondent is not making legitimate noncommercial or fair use of the Domain Names.
- the purpose of the Respondent's registration and use of the Domain Names is to "illegitimately trade" on the goodwill of the Complainant's PENTAIR Trademarks for commercial gain and profit.
- the Respondent is not commonly known by any of the Domain Names, or by the term "Pentair".
- the Complainant is not affiliated with the Respondent in any manner and there has been no contact with the Respondent other than sending the cease-and-desist letter on March 7, 2017 (to which no response was received).
- the Complainant has never authorized the Respondent to use the PENTAIR Trademarks, or any of the Domain Names.
- although the webpages to which the Domain Names resolve contain sponsored links which may be automatically generated, domain name registrants are still responsible for the content appearing on such websites.
The Domain Names were registered and are being used in bad faith
By reference to Paragraph 4(b) of the Policy (which sets out a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith), the Complainant contends as follows:
- by registering and using the Domain Names in the manner he has, the Respondent has intentionally attempted to redirect Internet users seeking information on the Complainant's products to websites which advertise for sale third party goods and services that are competitive with, or similar or related to, the Complainant's goods and services.
- the Respondent is taking advantage of the confusing similarity between the Domain Names and the Complainant's PENTAIR Trademarks and is presumably profiting from the goodwill associated with the Complainant's PENTAIR Trademarks by virtue of the use to which the Domain Names have been put.
- the Respondent's bad faith is further evidenced by the fact that he did not respond to the cease-and-desist letter from the Complainant but nevertheless continues to own and use the Domain Names.
- the Respondent was on constructive notice of the Complainant's trademark rights by the Complainant's various United States federal and foreign trademark registrations for the PENTAIR Trademarks.
- perhaps the Respondent's most egregious demonstration of bad faith is that he went on to register an additional six of the Domain Names – <pentairboosterpumps.com>, <pentairpoolpumps.com>, <pentairsolar.com>, <pentairsolarboosterpumps.com>, <pentairsolarclearner.com> and <pentairsolarclearners.com> on March 19, 2017, almost two weeks after the Respondent's receipt of the Complainant's March 7, 2017 cease-and-desist letter.
- It is well-established, under both UDRP policy and United States law, that a respondent's registration of multiple domain names that are confusingly similar to a complainant's established trademarks is evidence of bad faith; here, the Respondent has registered and is using twelve domain names containing the Complainant's PENTAIR Trademarks, including six that were registered after the Respondent's receipt of the Complainant's cease-and-desist letter.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the PENTAIR Trademark.
The Domain Names all include the Complainant's PENTAIR Trademark. However, they do not exclusively contain the PENTAIR Trademark and thus the mark and the Domain Names are not identical. The issue of confusing similarity must therefore be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The well-known PENTAIR Trademark is clearly recognizable within the Domain Names. It is the first and dominant part of each of them. The only real issue therefore is whether the words that follow the PENTAIR Trademark render the Domain Names something other than confusingly similar (to the PENTAIR Trademark). In the Panel's view, they do not.
The words that follow the PENTAIR Trademark are descriptive, e.g., solar, pool, pumps and/or are shorthand for descriptive words, e.g., flo (for flow), sol (for solar) and/or misspellings for descriptive words, e.g., clearner (for cleaner). Except in one case, (<pentairsolar.com>), the words that follow the PENTAIR Trademark are combinations of descriptive words, or shorthand or misspellings for such words, e.g., <pentairsolarpool>, <pentairsolflo.com> and <pentairsolarclearner>. It should be noted that given the nature of the goods and services with which the PENTAIR Trademark is associated, the inclusion of what follows the PENTAIR Trademark in each of the Domain Names may well enhance the risk of confusing similarity. In any event however, the Panel finds that the Domain Names are confusingly similar to the PENTAIR Trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Names. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Paragraph 4(c) of the Policy sets out a (non-exhaustive) list of circumstances which, if proved, will demonstrate that a respondent has rights to, or legitimate interests in a domain name. Thus, even if a respondent has not been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests by reference to Paragraph 4(c), or otherwise. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Respondent is not known by any of the Domain Names. The webpages to which the Domain Names resolve (directly or indirectly) do not appear "noncommercial" in nature. Even if they were, Paragraph 4(c) contemplates such use being without intent (for commercial gain) to misleadingly divert consumers. But it appears that that is what the Domain Names were designed to do. The Respondent would also likely fail in any attempt to demonstrate "fair use".
A respondent can also show that before any notice of dispute, it was using or had made 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. It is unlikely that any offering by the Respondent using Domain Names confusingly similar to the PENTAIR Trademark could be regarded as bona fide, particularly given the ultimate destinations of many of the links on the webpages to which the Domain Names resolve, i.e., to webpages offering competing products to those of the Complainant. The fact that the content of the webpages to which the Domain Names resolve may be automatically generated by others, does not absolve the Respondent from responsibility. Moreover, it is unlikely that the Respondent could maintain an argument that it was unaware at the outset, that registration of the Domain Names used in the way that they have been, would likely spark a dispute.
In any event, that the Respondent registered six of the twelve Domain Names after the Complainant's cease-and-desist letter was sent, would seem to put any answer to the Complaint based on bona fides or fairness beyond the reach of the Respondent. It appears very much to be the case that there is nothing much the Respondent could have said to support an argument that he does have rights or legitimate interests in the Domain Names.
There being no evidence before this Panel suggesting that the Respondent has rights or legitimate interests in the Domain Names but an abundance of evidence suggesting the opposite, the Panel is of the view that there would be nothing inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a (non-exhaustive) list of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Thus, for instance, (as described in Paragraph 4(b)(iv) of the Policy), where it can be demonstrated that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it, there may well be a finding of bad faith registration and use. The Respondent being responsible for the use to which the Domain Names have been put, there can be little doubt that there has been an intention to divert Internet users by creating a likelihood of confusion as envisaged above.
If a UDRP proceeding is commenced in circumstances where a well-known mark of which a respondent must have been aware (given the additional words/terms included in the domain name in question) has been used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid, or attempt to avoid, the risk of an adverse finding. Indeed, a respondent's non participation is a factor that can be taken into account (along with others, such as, as here, a failure to respond to a cease-and-desist letter), in considering bad faith under the Policy.
In this proceeding, the lack of good faith on the part of the Respondent has been amply demonstrated in relation to all twelve Doman Names by his registration of six of those Domain Names after the Complainant's cease-and-desist letter was sent.
Given the use to which the Domain Names have been put and in all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Names 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 disputed domain names <pentairboosterpumps.com>, <pentairpoolpumps.com>, <pentairsolarboosterpumps.com>, <pentairsolarclearner.com>, <pentairsolarclearners.com>, <pentairsolar.com>, <pentairsolarflo.com>, <pentairsolarpool.com>, <pentairsolarpoolpumps.com>, <pentairsolarpumps.com>, <pentairsolflo.com> and <pentairsolflopumps.com> be transferred to the Complainant.
Date: July 3, 2017