WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair, Inc. v. kys
Case No. D2017-1052
1. The Parties
The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America (“United States”), represented by Roetzel & Andress LPA, United States.
The Respondent is kys of Seoul, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <pentairkorea.com> is registered with Whois Networks Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2017. On May 30, 2017, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 2017, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On June 6, 2017, the Center notified the Parties, in both English and Korean, that the Complaint was submitted in English, and that according to the Registrar, the language of the Registration Agreement is Korean. In the same notification, the Center instructed the Complainant to provide, by June 9, 2017:
“1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Korean; or
3) submit a request for English to be the language of the administrative proceedings….”
To the Respondent, the Center stated that “if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by June 11, 2017.” The Center also advised the Respondent:
“Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials … as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by [June 11, 2017], we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.”
On June 6, 2017, the Complainant requested that English be the language of the proceeding, to which the Respondent did not reply.
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, in both English and Korean, formally notified the Respondent of the Complaint, and the proceeding commenced on June 12, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was July 2, 2017. The Respondent did not submit any response. Accordingly, on July 3, 2017, the Center, again in both English and Korean, notified the Respondent’s default
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on July 10, 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 markets and sells pumps, water storage tanks, water filters, water filtration systems, and related products, using the mark, PENTAIR. The Complainant has received registration of multiple PENTAIR marks in several countries, including the Republic of Korea (on February 10, 2014, and April 3, 2014, among others).
The Complainant also registered its domain name <pentair.com> on October 17, 1996.
The Respondent registered the disputed domain name <pentairkorea.com> on March 5, 2017.
5. Parties’ Contentions
The Complainant contends principally that: (i) the disputed domain name is identical or confusingly similar to a 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. In addition, the Complaint states:
“[T]he Complainant has never authorized the Respondent to use the PENTAIR Trademarks, or <pentairkorea.com>.”
“[T]he Respondent is … seeking to capitalize on the Complainant’s goodwill in its PENTAIR Trademarks by diverting Internet users who use those Trademarks to a page containing advertisements in an effort to generate revenue.”
“[T]he Respondent’s bad faith is further evidenced by that fact that the Respondent received a cease and desist letter from the Complainant and nevertheless continues to own and use <pentairkorea.com>.”
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
The Panel must initially address the language of the proceeding.
Paragraph 11(a) of the Rules provides that the language of the registration agreement is the language of the administrative proceeding, unless otherwise agreed by the parties or specified in the registration agreement. But the rule also states that the determination of the language is “subject to the authority of the Panel …, having regard to the circumstances of the administrative proceeding.” Here, the language of the Registration Agreement is Korean. Nevertheless, the Complainant requests that English be the language of the proceeding.
After receiving the Complaint submitted in English, the Center notified the Parties, in both Korean and English, of the Center’s procedural rules regarding the language of the proceeding. The Center informed the Respondent that it may object timely to a proceeding conducted in English. The Respondent did not respond to the Center’s notification, and has defaulted. Under these circumstances, the Panel determines that English is the language of the proceeding.
On the merits, in order to prevail, the Complainant must satisfy each of the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Panel determines that the disputed domain name <pentairkorea.com> is identical or confusingly similar to PENTAIR, a mark in which the Complainant has rights. The addition of a geographical term such as “korea” does not defeat confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The first element is satisfied.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized the Respondent to use the Complainant’s protected trademark. The Complainant has met its initial burden of making a prima facie showing. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would demonstrate the Respondent’s rights or legitimate interests in the disputed domain name, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is demonstrated.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name “has been registered and is being used in bad faith.” Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that are “evidence of the registration and use of a domain name in bad faith”.
Internet users who resort to the disputed domain name are taken to a website whose content is almost all in Korean, including conspicuously displayed text that states, “Domain registration is complete.” The site allows users to perform domain name searches, netting results from the website of <whoisdomain.kr>. As the Complaint avers, “[T]he Respondent has, by using the domain name <pentairkorea.com>, intentionally attempted to redirect Internet users seeking information on the Complainant’s products to websites displaying a registrar generated parking page incorporating sponsored links with unrelated content.”
Reviewing the available case record, the Panel can only conclude that the bad faith element that paragraph 4(a)(iii) requires is present. The evidence indicates that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site … by creating a likelihood of confusion with the [C]omplainant’s mark,” as set forth in paragraph 4(b)(iv).
The third element is established.
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 <pentairkorea.com> be transferred to the Complainant.
Date: July 24, 2017