The Complainant is Pentair, Inc. of Minnesota, United States of America (“U.S.”), represented by Roetzel & Andress LPA, U.S.
The Respondent is Hoang Van Tao of Ha Noi, Viet Nam.
The disputed domain name <maylocnuocpentair.com> (the “Disputed Domain Name”) is registered with Mat Bao Trading & Service Company Limited d/b/a Mat Bao (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2015. On April 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 2015 and April 16, 2015, 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. A copy of the Complaint in Vietnamese was received by the Center on April 27, 2015.
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(a) and 4(a), the Center formally notified the Respondent, in English and Vietnamese, of the Complaint, and the proceedings commenced on May 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2015.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on June 3, 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.
The Complainant is a U.S. company active in the field of offering numerous goods and services in the water industry, including without limitation, pumps; water storage tanks; water filters; water filtration etc., for industrial, residential, and commercial use worldwide. The Complainant is the owner of the trademark PENTAIR and other similar trademarks containing or comprising the term “pentair” (“PENTAIR Trademarks”) in numerous countries and jurisdictions, including, but not limited to, the U.S. and Viet Nam.
In the U.S., the Complainant owns numerous trademark registrations for the PENTAIR Trademarks, including Trademark Registration No. 2,573,714 dated May 28, 2002 for PENTAIR in International Class 7 and U.S. Classes 13, 19, 21, 23, 31, 34 and 35; Trademark Registration No. 2,591,597 dated July 9, 2002 for PENTAIR, logo in International Class 7 and U.S. Classes 13, 19, 21, 23, 31, 34 and 35; Trademark Registration No. 4,664,463 dated December 30, 2014 for PENTAIR, logo in International Classes 7, 9 and 11, etc. In Viet Nam, where the Respondent is located, the Complainant owns trademark registrations for the PENTAIR Trademarks, including Trademark Application No. 4-2012-24567 dated August 14, 2012 for PENTAIR in Classes 7, 9, 11 and 20; Trademark Registration No. 4-2012-17949 dated August 14, 2012 for PENTAIR, logo in Classes 7, 9, 11 and 20.
The Complainant also owns, among others, the domain names <pentair.com>, <pentairwater.com> and <pentairpool.com>.
The Disputed Domain Name was registered with the Registrar on May 7, 2014.
As indicated in the case file, the Complainant’s attorneys sent to the Respondent a cease and desist letter on January 6, 2015, in which they asked for a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply.
The Complainant alleges that the Disputed Domain Name, which incorporates the key “pentair” element of the Complainant’s PENTAIR Trademarks and merely adds the wording “máylộcnước” thereto is identical or confusingly similar to the Complainant’s PENTAIR Trademarks.
In particular, the Complainant argues that “máylộcnước” which means “water mill” is merely descriptive of some of the goods that the Complainant sells, therefore, the addition of this descriptive term is not sufficient to differentiate or distinguish the Disputed Domain Name from the Complainant’s PENTAIR Trademarks.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant alleges that the Respondent operates a website at the Disputed Domain Name, apparently for commercial gain, using a logo, colors, and branding that imitate those used by the Complainant. In particular, the Complainant contends that at the website resolved to by the Disputed Domain Name, the Respondent uses elements (i.e., the Complainant’s fish logo and the same blue and green color scheme) which are identical or closely similar to those owned and used by the Complainant; and appears to make unauthorized sales of the Complainant’s goods.
According to the Complainant, the Respondent uses the website under the Disputed Domain Name to pass itself off as and pose as the Complainant, or an affiliate of the Complainant, in an effort to trade on the goodwill of the Complainant and to divert customers from the Complainant to the Respondent.
In addition, the Complainant submits that the Respondent seeks to capitalize on the Complainant’s goodwill in its PENTAIR Trademarks by diverting Internet users using those Marks to search for the Complainant’s goods.
Finally, the Complainant submits that the Respondent is not commonly known by the Disputed Domain Name, “Pentair” or “máylộcnước Pentair” and that the Respondent has not been licensed or otherwise permitted to use the PENTAIR Trademarks.
The Complainant contends that by using the Disputed Domain Name, the Respondent has intentionally attempted to redirect Internet users seeking information on the Complainant’s goods and services to the Respondent’s own website, where it seeks to sell goods and services similar or identical to those of the Complainant, including unauthorized sales of the Complainant’s own goods.
The Complainant further contends that the Respondent’s receipt of a cease and desist letter from the Complainant and the fact that the Respondent did not respond to it but continued using the Disputed Domain Name is evidence of the Respondent’s bad faith.
Finally, the Complainant argues that the Respondent’s bad faith is further evidenced by use of the Disputed Domain Name to intentionally mislead consumers, luring them to the Respondent’s website by making them believe that the Respondent and its website are affiliated with or endorsed by the Complainant. Hence, the Complainant submits that the Respondent is illegitimately capitalizing on the Complainant’s PENTAIR Trademarks and brand, and the goodwill therein.
Therefore, the Complainant contends that the Disputed Domain Name was registered and being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
The Complaint was filed in the English language on March 31, 2015. On April 15, 2015, the Registrar informed that the language of the Registration Agreement is Vietnamese. As the Complaint was filed in English, the Center, in its notification dated April 17, 2015, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the administrative proceedings. On April 27, 2015, the Complainant submitted the Complaint translated into Vietnamese.
The Respondent has not commented on the language of the proceeding.
According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP panel decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the administrative proceeding, including, but not limited to, the nationality of the parties, a lack of reply from the Respondent and for the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the Panel accepts the Complaint in Vietnamese, but shall render its decision in English.
The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each the following three elements are present:
(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service 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.
The Complainant is required to establish the two following elements: (1) that it has trademark rights, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.
Firstly, the Complainant has clearly evidenced that it has trademark rights in and to the PENTAIR Trademarks, registered since as early as 2002, and thus, long before the registration of the Disputed Domain Name. Also in Viet Nam, where the Respondent is located, the Complainant applied for registration of the PENTAIR Trademarks in 2012, which is also prior to the registration date of the Disputed Domain Name. Further, it is evidenced that the Complainant has made lengthy use of its PENTAIR Trademarks for its commercial activities.
Secondly, the Panel finds that the Disputed Domain Name comprises the Complainant’s distinctive and well-known PENTAIR Trademarks in its entirety. The difference between the Disputed Domain Name and the PENTAIR Trademarks is the addition of the word “maylocnuoc”, which is a Vietnamese term for “water filters” and/or “water filtrations”, prior to the word “pentair”. Despite the fact that “maylocnuoc” itself has no meaning in English, Vietnamese customers are likely to perceive it as “máylọcnước” (“water filters” or “water filtrations” in English). Thus, this element should be considered as a descriptive term and, consequently, the Panel finds that PENTAIR is the dominant element in the Disputed Domain Name and that the addition of the word “maylocnuoc” does nothing to distinguish the Disputed Domain Name from the PENTAIR trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP panel decisions (see, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388).
Thirdly, the Panel finds, similar to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s PENTAIR Trademarks, and the first element under paragraph 4(a)(i) of the Policy is established.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and that there is no evidence that the Respondent holds such rights.
Normally, a reseller or distributor can be making a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name if its use meets the requirements described in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”):
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and
- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller (e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria.
Indeed, the Panel finds that before and at the date of this Decision, there is no information on the website under the Disputed Domain Name presenting accurately the Respondent’s (lack of) relationship with the Complainant. In addition, by the date on which the Complaint was filed, the Complainant’s PENTAIR trademark and logo were displayed on the website under the Disputed Domain Name, thus increasing the likelihood of confusion, amongst Internet users, as to the source or affiliation of the site and products offered therein. Further, at that time, the Respondent sold not only PENTAIR products, but also products of other manufacturers, including those being the Complainant’s competitors. For these reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services under the Oki Data criteria.
Moreover, the Panel finds no evidence that the Respondent, as an individual, business, or other organization, is or has been commonly known by the Disputed Domain Name. Further, it is apparent that by selling water related products via the website thereunder before and at the date on which the Complainant’s sent a cease and desist letter to the Respondent, the Respondent has made a commercial use of the Disputed Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and that the second element under paragraph 4(a)(ii) of the Policy is established.
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four 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. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel finds that the Complainant’s PENTAIR Trademarks have been registered on a worldwide basis. The Complainant’s PENTAIR Trademarks have been in use in, among other countries, Viet Nam where the Respondent resides.
The Disputed Domain Name comprises the PENTAIR Trademarks in their entirety, adding only the descriptive word “maylocnuoc” which is a Vietnamese term for “water filters” and/or “water filtration”. PENTAIR is being used in the Complainant’s PENTAIR Trademarks, trade name, and domain names <pentair.com>, <pentairwater.com> and <pentairpool.com>, which all predate the registration of the Disputed Domain Name. PENTAIR, which is a coined word, without any dictionary meaning, is neither descriptive nor generic in respect of any products or services.
These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and its PENTAIR Trademarks before his registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.
As discussed earlier, the Respondent is using the Complainant’s PENTAIR Trademarks in their entirety, and the PENTAIR Trademarks are recognizable as such in the Disputed Domain Name. Further, the Panel finds that in addition to the adoption of the Complainant’s PENTAIR mark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used the Complainant’s PENTAIR logo on the website and did not disclose the actual relationship with the Complainant on that website. The Panel finds this an evidence of use in bad faith.
Further, on the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to an inactive website. Therefore, the Panel1 searched for archives of the website at “www.archive.org”, and found that by the date on which the Complaint was filed, the website under the Disputed Domain Name had been used for promoting a company named “Công ty Cô phàn Smart Viêt” (in English: Smart Viet Joint Stock Company) (“Smart Viet”), who offered water filters products of the Complainant and similar products of other manufacturers. The Panel reiterates that the PENTAIR trademark was displayed prominently on the website at that time.
With such facts, the Panel opines that the Respondent is using the PENTAIR trademark in both the Disputed Domain Name and the website thereunder to intentionally mislead consumers into believing that the website under the Disputed Domain Name is somehow associated, fostered or recommended by the Complainant. The Panel infers from such behavior that the Respondent’s purpose in using the Disputed Domain Name is to capitalize on the reputation and goodwill of the Complainant’s trademark, and thus generate unjustified revenues. Such behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
In addition, the Panel notes that fact the Respondent received a cease and desist letter from the Complainant and did not respond to it. Instead, the Respondent continued to use the Disputed Domain Name as an address for an active web site until the date it was notified of the commencement of the UDRP proceeding. The Respondent also did not respond to the Complainant’s contentions.
Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a)(iii) of the Policy 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, <maylocnuocpentair.com>, be transferred to the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: June 16, 2015
1 The Panel may undertake limited factual research into matters of public record, see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.