WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair, Inc. v. Vietnam Domain Privacy Services / Pham Dinh Nhut
Case No. D2014-2161
1. The Parties
The Complainant is Pentair, Inc. of Minnesota, United States of America (“United States”), represented by Roetzel & Andress LPA, United States.
The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh, Viet Nam / Pham Dinh Nhut of Ho Chi Minh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <pentaire.com> is registered with April Sea Information Technology Corporation (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 11, 2014. On December 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2014, the Registrar transmitted by email to the Center its verification 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 December 22, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On December 22, 2014, the Center notified the Parties in both Vietnamese and English regarding the language of proceeding. The Complainant filed an amended Complaint on December 22, 2014 and an amended Complaint in Vietnamese on December 28, 2014.
The Center verified that the Complaint together with the amended Complaints 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(a) and 4(a), the Center formally notified the Respondent in both English and Vietnamese of the Complaint, and the proceedings commenced on December 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2015.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on January 27, 2015. 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 is the owner, amongst others, of the following trademark registrations:
- United States Trademark registration No. 2,573,714 for PENTAIR registered on May 28, 2002, to cover products in class 07;
- United States Trademark registration No. 4,348,967 for PENTAIR registered on June 11, 2013, to cover products in classes 07, 09, 11 and 20 (Annexes 05 and 06 to the Complaint);
The disputed domain name <pentaire.com> was registered on August 3, 2004. Currently the disputed domain name resolves to a parking page with pay-per-click (“PPC”) links.
5. Parties’ Contentions
The Complainant asserts that it (and its various subsidiaries and affiliates) has continuously and extensively used the PENTAIR trademark since at least as early as 1999 in connection with the sale of numerous goods and services (notably in the pumps, water filters and hydraulic systems markets), having registered such trademark in the United States of America in 2002.
The Complainant further asserts that the disputed domain name is substantially identical and confusingly similar to its PENTAIR trademark because it incorporates the key element of the mark, merely adding the letter “e” thereto. Such addition, in the Complainant’s view, is not sufficient to differentiate or distinguish the disputed domain name from the Complainant’s trademark and domain names and could characterize typosquatting.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services given that in the webpage related to it available links are displayed redirecting users to sponsored links and Complainant’s competitors in the “pool filters”, “pool supplies” and “pool pumps” businesses;
(ii) the Respondent has not been commonly known by the disputed domain name; and
(iii) the Respondent has no relationship with the Complainant and has not received any license or permission to register the Complainant’s trademark in the disputed domain name.
Lastly, the Complainant asserts that the bad faith of the Respondent is evident given that the Respondent is intentionally misleading and attempting to redirect Internet users to its advantage. Furthermore the Respondent’s bad faith can also be proved by the fact that it attempted to contact the Respondent without any reply (Annex 3 to the Complaint) and that the Respondent has used a Privacy Protection service seeking to hide its true identity.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complaint was submitted in English on December 11, 2014 and an amended version of the Complaint was also submitted in Vietnamese on December 28, 2014 further to the Registrar’s confirmation that the language of the registration agreement was Vietnamese. The Respondent did not submit a Response and appears to have some level of English considering the contents of the website being in English. This would be sufficient according to previous panels for this decision to be rendered in English. In these circumstances the Panel decides that the decision will be rendered in English in accordance with paragraph 11(a) of the Rules.
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(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 has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.
A. Identical or Confusingly Similar
The Complainant has established its rights in its PENTAIR trademark, duly registered in the United States of America as well as several countries around the world (Annexes 5 and 6 to the Complaint).
The Complainant’s trademark is entirely reproduced in the disputed domain name and the addition of the letter “e” in this Panel’s view does not distinguish the disputed domain name from the Complainant’s trademark.
The first element of the Policy has therefore been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a nonexclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that it has not licensed or otherwise permitted the Respondent to use the PENTAIR trademark in the disputed domain name, nor is there any sort of relationship between the Complainant and the Respondent.
Also, the lack of evidence as to whether the Respondent is commonly known by the disputed domain name or the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, corroborate with the indication of the absence of a right or legitimate interest.
Another element to be taken into account is the absence of any reply to the warning letter sent to the Respondent.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
In this case, the use of the disputed domain name in connection with a parked website that displays links or pay-per-click advertisements related to the Complainant’s business characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from the links that solely exist in view of the association with the Complainant’s trademark.
Such use, in this Panel’s view, constitutes an attempt to profit from the fame and goodwill associated with the Complainant’s trademark, thus capitalizing on the PENTAIR trademark by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant.
Also, as already mentioned, the Respondent did not reply the warning letter sent by the Complainant prior to the beginning of this procedure nor did he file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the use of a privacy service by the Respondent may further support, in the circumstances of this case, the Panel’s finding of bad faith.
For the reasons as those stated above, the Panel finds that the disputed domain name was registered and is being used in bad faith pursuant to 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 <pentaire.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: February 9, 2015