WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair Flow Services AG v. Domains By Proxy, LLC / I S, ICS INC
Case No. D2017-1892
1. The Parties
The Complainant is Pentair Flow Services AG of Schaffhausen, Switzerland, represented by Roetzel & Andress LPA, United States of America (“United States”).
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / I S, ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <pentaer.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2017, 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 October 4, 2017, 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 October 4, 2017.
The Center verified that the Complaint together with the amended to the Complaint (hereafter referred to as 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 October 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2017.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 8, 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.
On November 28, 2017, the Panel issued Administrative Panel Procedural Order No. 1. The Procedural Order noted an oversight in the Notification of the Complaint. Noting the Respondent’s absence of a reply, and in an abundance of caution, the Procedural Order directed the Center to re-notify the Respondent of the Complaint in accordance with paragraph 2(a) of the Rules, and allowed the Respondent a period of 20 days in which to submit a response. The Complaint was re-notified to the Respondent in accordance with the Procedural Order. No response was received from the Respondent.
4. Factual Background
The Complaint does not explain the nature and the business of the Complainant. The Complaint asserts that “the Complainant (and its various subsidiaries and affiliates)” owns rights in the United States and in numerous other countries worldwide in the trademark PENTAIR, the earliest of which appears to date from 2002. The material annexed to the Complaint shows that an entity named “Pentair, Inc.” is the owner of a number of United States trademark registrations for, or including, the word trademark PENTAIR. The Complaint refers to Pentair, Inc. as being an “affiliated entity” of the Complainant.
The Complaint states that the Complainant (and its various subsidiaries and affiliates) has continuously and extensively used the PENTAIR trademark in the United States and other countries since at least as early as 1999 on, and in connection with the sale of, numerous goods and services, including pumps, water storage tanks, water filters, water filtration and treatment, pool and spa vacuums and cleaners, hydraulic controls, electrical controllers, water heaters, pool spa and landscape lighting equipment, and thermal management systems and equipment.
The disputed domain name was registered on May 29, 2017. Annexed to the Complaint was a screenshot of the webpage to which the disputed domain name resolved on September 28, 2017. That webpage consists of a list of what are called “Related Links” to various other web pages. The text containing the links consists of phrases such as “Pentair Pool Pump”, “Pentair Water Filters” and “Pentair Chlorinator”. Also annexed to the Complaint was a screenshot of the webpage to which one of those links resolved, and a screenshot of the webpage to which that webpage further linked. Those webpages appeared to be offering for sale third-party products similar to, or in competition with, the products offered by the Complainant or its various subsidiaries or affiliates.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s PENTAIR trademark because: (i) it contains the entirety of the Complainant’s PENTAIR trademark and merely changes the letter “i” to an “e”, which does not dispel the confusing similarity, but rather demonstrates that the Respondent is targeting the Complainant’s mark; (ii) the disputed domain name is phonetically identical to the Complainant’s PENTAIR trademark; (iii) the Respondent has intentionally used the Complainant’s PENTAIR trademark in order to attract Internet users who have merely mistyped the Complainant’s URL address, and the Respondent is thereby engaging in the prohibited practice of “typosquatting”.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) prior to notice of this dispute, the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services, and there was no indication that the Respondent was making “demonstrable preparations” to do so, as the Respondent’s use of the disputed domain name merely directed users to similar webpages that contained sponsored links to various other web pages; (ii) at the date of filing the Complaint, the disputed domain name was being used to direct Internet users to a webpage that listed related links to various other webpages, some of which offer for sale third-party products which are similar to, or in competition with, the Complainant’s products; (iii) the Respondent is seeking to capitalize on the Complainant’s goodwill in its PENTAIR trademark by diverting Internet users who use that trademark to search for the Complainant’s products, which is a violation of the Complainant’s trademark rights; (iv) the Respondent is not commonly known by the disputed domain name; (v) 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 in June 2017, to which the Respondent did not respond; (vi) the Complainant has never authorized the Respondent to use the PENTAIR trademark or the disputed domain name; and (vii) the disclaimer on the webpage resolving from the disputed domain name, stating that the sponsored listings are generated automatically, does not absolve the Respondent of its responsibility for the content appearing on that webpage.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has intentionally attempted to redirect Internet users seeking information on the Complainant’s products to websites displaying unrelated content, including the marketing of third-party goods and services, some of which are in competition with the Complainant’s products; (ii) the Respondent is taking advantage of the confusing similarity between the disputed domain name and the Complainant’s PENTAIR trademark, and is presumably profiting from the goodwill associated with it; (iii) the Respondent received a cease and desist letter from the Complainant and nevertheless continued to own and use the disputed domain name; and (iv) the Respondent was placed on constructive notice of the Complainant’s trademark rights by the Complainant’s various United States federal and foreign trademark registrations for the PENTAIR trademark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Ownership of rights to the PENTAIR trademark
The Complaint asserts that the Complainant “owns rights in” numerous trademark registrations for the trademark PENTAIR. The only material annexed to the Complaint relevant to this assertion appears to show, however, that the trademarks are currently registered in the name of “Pentair, Inc.” (with a number of them previously having been registered in the name of the Complainant). The Complaint does not explain the relationship between the Complainant and Pentair, Inc., other than the bald statement that Pentair. Inc. is an “affiliated entity”. No evidence of this affiliation was provided.
The Panel is troubled by the absence in the Complaint of evidence for, or even an explanation of the basis to, the assertion that the Complainant “owns rights” in the PENTAIR trademark. However, the Respondent did not challenge this assertion (or, indeed, any other assertion) by the Complainant. In the absence of any challenge by the Respondent to the assertion, the Panel is willing to find, based on the available record and for the purposes of this Decision only, that the Complainant does have some rights in the PENTAIR trademark. References hereafter to “the Complainant’s” PENTAIR trademark are to be understood in that context.
B. Identical or Confusingly Similar
The disputed domain name incorporates the dominant part of the Complainant’s registered word trademark PENTAIR, but substitutes the letter “i” with the letter “e”. The substitute letter, like the letter it substitutes for, is a vowel. According to the Oxford English Dictionary (“OED”), the final three characters of the domain name, “aer”, is a word, the meaning of which is “a veil used to cover both the chalice and paten during the Liturgy”. It is not a common word – according to the OED, its frequency of use is between 0.1-0.99 per 1 million words.
The Panel considers that the typical reader of the English language would not recognize “aer” as a word, but rather would see it as a misspelling of the common English language word “air” – whose usage frequency of use is, according to the OED, 1,000 times greater. Furthermore, the Panel considers that a typical speaker of English, not being familiar with the word “aer”, would seek to pronounce it in a manner quite similar to the pronunciation of the common word “air”. For these reasons, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use the PENTAIR trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website containing links to other webpages offering for sale third-party products, some of which are similar to, or in competition with, products offered by the Complainant or its affiliates. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered the PENTAIR trademark. The assertions provided by the Complainant with respect to the use of the PENTAIR trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain name indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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 name <pentaer.com> be transferred to the Complainant.
Andrew F. Christie
Date: December 20, 2017