WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
A. O. Smith Corporation v. Anuj Kumar
Case No. D2018-1097
1. The Parties
The Complainant is A. O. Smith Corporation of Milwaukee, Wisconsin, United States of America, represented by RNA, IP Attorneys, India.
The Respondent is Anuj Kumar of New Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <aosmithcustomercare.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 May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 17, 2018, 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 24, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2018.
The Center appointed Miguel B. O’Farrell as the sole panelist in this matter on July 2, 2018. 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, A.O. Smith Corporation, was founded in 1874 and is a global water technology company manufacturing residential and commercial water heaters, boilers and water purification equipment and claims to employ approximately 15,500 men and women at operations in the United States, Canada, Mexico, China, India, the United Kingdom, the Netherlands and Turkey, with distribution in more than 60 countries around the world.
The Complainant claims to be the largest manufacturer and marketer of water heaters in North America and to also supply water treatment products in the Asian market, having sold products worth USD 2.69 billion in 2016.
The domain <aosmith.com> was registered by the Complainant on December 29, 1994 and serves to promote its name and house mark A.O. SMITH internationally, together with its goods and services.
The Complainant holds rights in the trademark A.O.SMITH in more than 25 countries. In India the Complainant is the proprietor, inter alia, of the trademark A.O.SMITH No. 1668622 registered on March 25, 2008, (currently renewed until March 25, 2028), for goods in class 7 and A.O. SMITH No. 1968839 registered on May 20, 2010, and renewed until May 20, 2020, for goods in class 11.
The details of Complainant’s business and their operations in India can be found at “www.aosmithindia.com” which was registered on March 11, 2008, year in which the Complainant claims to have entered the Indian market and first used the A.O. SMITH trademark and logo for water heaters and water purifiers in that country.
The disputed domain name <aosmithcustomercare.com> was registered on April 18, 2018. The website to which it resolves prominently displays the Complainant’s trademark A.O.SMITH and logo and purportedly offers customer care services in India.
5. Parties’ Contentions
The Complainant asserts that the Respondent is a habitual offender and serial cybersquatter. In an earlier decision A. O. Smith Corporation v. Kapil Kumar, WIPO Case No. D2017-1346, the panel ordered the transfer of the domain name <ao-smith-customer-care.com> to the Complainant. In that case the respondent was Kapil Kumar (same surname as Anuj Kumar the Respondent in this case) and with the same WhoIs listed address. Moreover, the Complainant asserts that a simple comparison between the screenshots of the presently disputed domain name and previously disputed domain name shows that the contents, design and layout of both websites are the same and concludes that it is obvious that the ownership, management and control of both websites are with the same entity/person.
The Complainant further asserts that the Respondent’s choice of the disputed domain name is not accidental and has been made to cleverly derive unfair monetary advantage by using the Complainant’s well-known trademark A.O.SMITH to offer its services to interested unaware customers.
In summary, the Complainant contends that the disputed domain name <aosmithcustomercare.com> is confusingly similar to the Complainant’s trademark A.O.SMITH and logo AOSmith, that the Respondent has no rights or legitimate Interests with respect to the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Complainant requests transfer of the disputed domain name to the Complainant.
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 disputed domain name, the Complainant must prove each of the following, namely that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights in the trademark A.O. SMITH.
The standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the trademark and the disputed domain name to determine whether the domain name is confusingly similar to the trademark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.
In this case the disputed domain name <aosmithcustomercare.com> contains the Complainant’s trademark, A.O.SMITH in its entirety. Neither the absence of the dots nor of the addition of the non-distinctive words “customer care” serves to avoid a finding of confusing similarity.
It has been held that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a domain name is identical or confusingly similar to a mark. See Chernow Communications, Inc. v. Jonathan Kimball, WIPO Case No. D2000-0119. Much less then may the absence of dots, such as in this case, avoid confusing similarity between the Complainant’s trademark and the disputed domain name.
As set forth in section 1.7 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “in cases where the domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark”.
For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) as it is viewed as a standard registration requirement (section 1.11.1 of WIPO Overview 3.0). Thus, for the test for confusing similarity of this first prong the Panel shall disregard the “.com” TLD.
The Panel finds that the disputed domain name is confusingly similar to the trademark A.O.SMITH in which the Complainant has rights and that 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 a 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 trademark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established, as it is put in section 2.1 of WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Complainant sustains that it has never granted the Respondent with the right to use or register the trademark A.O.SMITH belonging to the Complainant or to register and use the A.O.SMITH trademark as a domain name.
Previous panels under the Policy have found that a lack of rights or legitimate interests exists where, as here, the “Complainant asserts that it has not authorized Respondent to use the mark” (see, Chicago Pneumatic Tool Company LLC v. Texas International Property Associates- NA NA, WIPO Case No. D2008-0144).
As sustained by the Complainant, there is no evidence in the present case that the Respondent has been commonly known by the disputed domain name, enabling it to establish rights or legitimate interests in the disputed domain name <aosmithcustomercare.com>. The name of the Respondent is Anuj Kumar which does not resemble the disputed domain name in any manner.
Likewise, and as further discussed under section C of this decision, it does not seem that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name, but rather it is using the Complainant’s trademark without consent for the purpose of deriving unfair monitory advantage by confusing Internet users and leading them to believe that the site to which the disputed domain name relates is the official site of the Complainant. The presence of a fine-print disclaimer at the bottom of the page does not serve to avoid such a misleading impression of association with the Complainant, when the overall impression given by the Respondent’s website is that is operated by or affiliated with the Complainant.
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 has therefore failed to rebut the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the disputed 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 trademark A.O.SMITH and logo when it registered the disputed domain name <aosmithcustomercare.com> on April 18, 2018.
The Panel also tends to agree with the Complainant that there is a close connection, if not identity, between the Respondent and the respondent in A. O. Smith Corporation v. Kapil Kumar, supra, in which the panel ordered the transfer of the domain name <ao-smith-customer-care.com> to the Complainant.
The fact that there is an absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain name is also a significant factor to consider that the disputed domain name was registered in bad faith (as stated in section 3.2.1 of WIPO Overview 3.0).
By using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s widely used mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This amounts to bad faith under paragraph 4(b)(iv) 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 <aosmithcustomercare.com> be transferred to the Complainant.
Miguel B. O'Farrell
Date: July 16, 2018