WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pentair, Inc. v. Domain Administrator, PrivacyGuardian.org / Zhichao Yang

Case No. D2017-0007

1. The Parties

The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America (“U.S.”), represented by Roetzel & Andress LPA, U.S.

The Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, U.S. / Zhichao Yang of Hefei, Anhui, China.

2. The Domain Name and Registrar

The disputed domain name <pentairprotec.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2017. On January 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 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 January 6, 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 the same day.

The Center verified that the Complaint together with the amended 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 January 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2017.

The Center appointed Ian Blackshaw as the sole panelist in this matter on February 6, 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 is a Minnesota-based U.S. Corporation whose main area of business is water and fluid control for the energy, food and beverage, and manufacturing industries. The Complainant, and its various subsidiaries and affiliates, owns rights in the U.S. and in numerous other jurisdictions in and to the PENTAIR trademark (registered in the U.S. as of July 9, 2002) and other similar trademarks and trade names containing or comprising the term PENTAIR (the “PENTAIR Trademarks”). Evidence has been provided to the Panel.

In addition, the Complainant’s wholly-owned subsidiary, Hoffman Enclosures, Inc. (“Hoffman”), owns rights in and to the PROTEK Trademark (registered in the U.S. as of October 31, 2006), for use with “enclosures for electrical equipment” (the “PROTEK Trademark”). Further, Hoffman owns registrations for the PROTEK Trademark in the U.S. and in other jurisdictions. A copy of Hoffman’s Registration Certificate for the PROTEK Trademark has been provided to the Panel. In addition, Hoffman brands its products under both the PROTEK and the PENTAIR Trademarks. Again, evidence has been provided to the Panel.

Further, the Complainant owns the domain names <pentair.com> and <pentairwater.com>, amongst others; likewise, the Complainant’s affiliated company, Pentair Thermal Management, LLC, owns the domain name <pentairprotect.com>.

In addition, the Complainant and its various subsidiaries and affiliates uses or has used the following business names, amongst others, containing or comprising the term “Pentair”: “Pentair”; “Pentair Water”; “Pentair Residential Filtration”; “Pentair Filtration Solutions”; “Pentair Flow Technologies”; “Pentair Pool Products”; “Pentair Water Pool and Spa”; and “Pentair Aquatic Systems”.

The disputed domain name was registered on October 27, 2016. The disputed domain name resolves to a parking page displaying pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following assertions:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant and its various subsidiaries and affiliates have continuously and extensively used the PENTAIR Trademarks in the U.S. and in numerous other countries worldwide, since, at least, as early as 1999, on and in connection with the sale of numerous goods and services, including without limitation: pumps; water storage tanks; water filters; water filtration, treatment, reverse osmosis, softening, deionization, desalination, sterilization, and storage equipment and systems; pool and spa vacuums and cleaners; hydraulic controls; spraying equipment; valves; automatic valves; impellers; electrical controllers; remote controllers; metal and non-metal cabinets and sheet metal boxes for use in housing controls and electrical and electronic equipment; water heaters; pool, spa, and landscape lighting equipment; thermal management systems and equipment; and fiberglass reinforced, plastic, and nonmetallic containers for industrial, residential, and commercial use.

As such, the Complainant and its various subsidiaries and affiliates have established significant common law and registered rights in and to the PENTAIR Trademarks in the U.S. and elsewhere around the world. Similarly, the Complainant’s affiliated company, Hoffman, has established significant common law and registered rights in and to the PROTEK Trademark in the U.S. and elsewhere around the world.

The Complainant registered the <pentair.com> domain name on October 17, 1996, and the <pentairwater.com> domain name on July 27, 1999. Evidence has been provided to the Panel. Likewise, the Complainant’s affiliated company, Pentair Thermal Management, LLC, registered the <pentairprotect.com> domain name on February 21, 2014. Again, evidence has been provided to the Panel.

Based on the foregoing, the Complainant and its various subsidiaries and affiliates have acquired substantial rights in the U.S. and worldwide in and to the PENTAIR Trademarks, as well as the PROTEK Trademark.

The disputed domain name is confusingly similar to the Complainant’s PENTAIR Trademarks, as well as the PROTEK Trademark, for the following reasons:

First, the disputed domain name is confusingly similar to the Complainant’s PENTAIR Trademarks under paragraph 4(a)(i) of the Policy, because it incorporates the entire name “pentair”, which is identical to the Complainant’s valuable PENTAIR Trademarks.

The Respondent’s addition of the term “protec” to the disputed domain name is not sufficient to differentiate the disputed domain name from the Complainant’s PENTAIR Trademarks, as the name “protec” is closely similar to “protect”, which is descriptive of some of the goods and services that the Complainant and its affiliated companies offer under the PENTAIR Trademarks.

In addition, because the Complainant’s affiliated company, Hoffman, also owns rights in and to the phonetically identical PROTEK Trademark and brands its products under both the PENTAIR Trademark and the PROTEK Trademark together, the disputed domain name is likely to cause confusion.

Thus, there is nothing to differentiate or distinguish the disputed domain name from the Complainant’s PENTAIR Trademarks, or the PROTEK Trademark. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (holding that a domain name is identical or confusingly similar to a trademark for purposes of the policy “when the domain name includes the trademark … regardless of the other terms in the domain name”); and Samsung Electronics Co., Ltd v. Kutchery Road, WIPO Case No. D2008-1436 (holding that the addition of a descriptive or generic word to a mark does not avoid confusing similarity to a complainant’s trademark, which is especially true where the descriptive or generic word is associated with the complainant and its services).

Second, there is nothing to differentiate or distinguish the disputed domain name from the Complainant’s <pentair.com> and <pentairwater.com> domain names, or from Pentair Thermal Management, LLC’s <pentairprotect.com> domain name.

Third, the disputed domain name is substantially identical, and thus confusingly similar phonetically, visually, and in overall commercial impression, to the Complainant’s numerous business names and trade names that contain or comprise the PENTAIR Trademarks.

For the foregoing reasons, the disputed domain name is substantially the same and, therefore, confusingly similar to the Complainant’s PENTAIR Trademarks, and to the PROTEK Trademark. Since the Respondent is using the PENTAIR Trademarks and the PROTEK Trademark together, there is even greater likelihood of confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy sets forth a number of circumstances that, without limitation, may be used by a respondent to effectively demonstrate that it has rights to, or legitimate interests in, a disputed domain name. These circumstances include the following: (i) “[b]efore any notice to [the respondent] of the dispute, use by [the respondent] 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;” (ii) “[w]here [the respondent] has been commonly known by the disputed domain name, even if [the respondent] has acquired no trademark or service mark rights;” and (iii) “[w]here [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.” See, e.g., Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500.

In the present case, prior to notice of this dispute to the Respondent by way of the Complainant’s cease-and desist letter dated November 22, 2016, the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services; nor was there any indication that the Respondent was making “demonstrable preparations” to do so, as the disputed domain name at that time merely directed users to similar web pages that listed sponsored links to various other web pages. A copy of the cease-and-desist letter has been provided to the Panel.

As of December 12, 2016, the disputed domain name directed users to a web page that lists related links to various other web pages, some of which sell third-party products. A copy of the web page has been provided to the Panel.

Several of such related links direct to a web page showing additional sponsored listings offering for sale the goods of third parties, some of which are similar or related to – or competitors with – the Complainant’s products. For example, the web page, a copy of which has been provided to the Panel, offers for sale, amongst other things, filtration pumps, liquid OEM pumps, process pumps, and pump parts, which are closely similar or identical to – and thus are competitors with – products offered by the Complainant. Similarly, the web page, a copy of which has been provided to the Panel, offers for sale water treatment systems, liquid storage tanks, and metering pumps, which are closely similar or identical to – and thus are competitors with – products offered by the Complainant.

The web pages also link to the websites, copies of which have been provided to the Panel, which offer for sale swing piston pumps, solenoid diaphragm dosing pumps, micro gas pumps, and accessories such as pressure control valves; and plastic or fiberglass liquid storage tanks, actuated, control valves, manual control valves, and pumps for transferring chemicals and corrosives. The goods sold on these web pages are either closely similar or related to, or directly competitive with, the Complainant’s products.

Rather than a legitimate use, the Respondent is instead seeking to capitalize on the Complainant’s and its subsidiary’s goodwill in its PENTAIR and PROTEK Trademarks by diverting Internet users who use those Trademarks to search for the Complainant’s products. The Respondent’s diversion is a violation of the Complainant’s trademark rights, and such use by the Respondent does not establish a right or legitimate interest in the disputed domain name. See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

In light of the Respondent’s use of the disputed domain to provide sponsored links to third parties’ commercial websites, the Respondent is not making legitimate noncommercial or fair use of the disputed domain name. See, e.g., Societe Nationale des Chemins de fer Francais – SNCF v. Damian Miller/Miller, Inc., WIPO Case No. D2009-0891 (holding that “… there is no noncommercial or fair use of the domain name given that the website contains sponsored links to third parties’ commercial websites offering services for train or train tickets that compete with those of the complainant”). In the present case, as in the above cited case, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, upon information and belief, the Respondent’s registration and use of the disputed domain name is to “illegitimately trade” on the goodwill of the Complainant’s and its subsidiary’s respective PENTAIR and PROTEK Trademarks for commercial gain and profit.

Likewise, upon information and belief, the Respondent is not commonly known by the disputed domain name or by the names “Pentair” or “Protec”.

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 the above-mentioned cease-and-desist letter. Further, the Respondent did not respond, via email or any other form of communication, to the Complainant’s letter.

The Complainant has never authorized the Respondent to use the PENTAIR Trademarks, the PROTEK Trademark, or the disputed domain name. See, e.g., Alstom v. Yulei, WIPO Case No. D2007-0424 (holding that the complainant’s failure to license or permit a respondent to use and register its trademarks as domain names was a relevant factor in finding that the respondent had no rights or legitimate interests in the disputed domain name).

Finally, the Respondent’s web page includes a disclaimer that the sponsored listings displayed are generated automatically by a third-party. As such, the Respondent attempts to deny responsibility for illegitimately trading on the goodwill of the Complainant’s and its affiliate’s PENTAIR and PROTEK Trademarks for commercial gain and profit. However, previous UDRP panels have held that domain name registrants are usually held responsible for the content appearing on a website at a domain name which the registrant owns, notwithstanding the fact that advertisement links may be automatically generated. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); Zions Bancorporation v. James Murphy, WIPO Case No. D2014-1722; and LeoVegas Gaming Ltd. v. OS Media (Ocana Patrick), WIPO Case No. D2015-1134.

Based on the foregoing, the Respondent has no rights to or legitimate interests in the disputed domain name.

(iii) The disputed domain name was registered and is being used in bad faith.

Paragraph 4(b)(iv) of the Policy sets forth a number of circumstances which, without limitation, may be used to effectively demonstrate that a respondent has registered a disputed domain name in bad faith. These listed circumstances include but are not limited to the situation in which a respondent has used a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to that respondent’s 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 respondent’s website or other on-line location. See, e.g., Crocs Inc. v. Alex Xie, WIPO Case No. D2011-1500.

The following evidence supports the Respondent’s bad faith in registering and using the disputed domain name:

First, the Respondent has, by using the disputed domain name, intentionally attempted to redirect Internet users seeking information on the Complainant’s products and services to websites displaying unrelated content, including the sales and marketing of third-party goods and services.

In the present case, the Respondent is taking advantage of the confusing similarity between the disputed domain name and the Complainant’s PENTAIR Trademarks, as well as the PROTEK Trademark, and, upon information and belief, is presumably profiting from the goodwill associated with the Complainant’s PENTAIR Trademarks and its subsidiary’s PROTEK Trademark. As such, the Respondent has registered and is using the disputed domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy.

Second, the 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 the disputed domain name. See the above-cited Volvo Trademark Holding AB v. Unasi, Inc., supra (stating that receipt of a cease-and-desist letter by the respondent and continued use of the disputed domain name thereafter may be evidence of bad faith). See also Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806 (holding that the respondent’s failure to reply to the complainant’s cease-and-desist letter suggests that the disputed domain name has been registered and is being used in bad faith). The Respondent was further placed on notice by its privacy service as the Complainant submitted its cease-and-desist letter through PrivacyGuardian.org’s website, which allows individuals to contact the domain name owner. Evidence has been provided to the Panel

Third, the Respondent was placed on constructive notice of the Complainant’s trademark rights by the Complainant’s various U.S. federal and foreign trademark registrations for the PENTAIR Trademarks, as well as Hoffman’s U.S. registration for the PROTEK Trademark. See Ets Leobert, SARL v. Jeonggon Seo, WIPO Case No. D2009-0004 (holding that, since the complainant’s marks were widely known, it was unlikely that the respondent, at the time of registration of the disputed domain name or thereafter, was not aware that it was infringing the complainant’s marks).

For the foregoing reasons, the disputed domain name has been registered and used in bad faith by the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions nor take any part in the present proceedings.

6. Discussion and Findings

To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(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.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

A. Identical or Confusingly Similar

It is well established in previous UDRP decisions that, where the domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the Complainant’s PENTAIR Trademark and, substantially, its affiliate’s PROTEK Trademark, which makes the disputed domain name confusingly similar to these marks. This, in the view of the Panel, is bound to lead to confusion on the part of consumers and Internet users seeking information about the Complainant and its products and services marketed under its PENTAIR Trademark and its affiliate’s PROTEK Trademark.

The addition by the Respondent, as a suffix, of the word “protec”, is likewise confusingly similar to the Complainant’s affiliate’s registered trademark PROTEK.

In view of all of the above, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s PENTAIR Trademark and its affiliate’s PROTEK Trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights.

The first element of the Policy, therefore, has been met.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

(i) Whether there is any evidence of 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 before any notice to the Respondent of the dispute;

(ii) Whether the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights;

(iii) Whether 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.

There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done.

In the view of the Panel, the adoption by the Respondent of a domain name identical or confusingly similar to the Complainant’s PENTAIR Trademark and its affiliate’s PROTEK Trademark inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products and services. Further, the Panel finds that the Respondent is trading unfairly on the Complainant’s and its affiliate’s well-known trademarks, namely PENTAIR and PROTEK, and also the valuable goodwill that the Complainant and its affiliate have established in these trademarks through prior commercial use.

Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.

Therefore, for all of the above reasons and also those advanced above by the Complainant, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constituteevidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Based on the evidence provided on the record, the Panel considers that the Respondent, by registering the disputed domain name incorporating the Complainant’s well-known PENTAIR Trademark and its affiliate’s PROTEK Trademark, is trading unfairly on the Complainant’s valuable goodwill established in such trademarks. This constitutes bad faith under the provisions of paragraph 4(b)(iv) of the Policy. See Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493, in which it was stated that “consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark”. As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, this is a further indication that the disputed domain name was registered and is being used in bad faith.

Again, in the absence of any explanation to the contrary by the Respondent, of which none is forthcoming on the record, the Panel takes the view that the Respondent did not register and use the disputed domain name by chance, but must have been aware of the notoriety of the Complainant’s and its affiliate’s well-known PENTAIR and PROTEK Trademarks and their prior commercial use.

Also, the Panel finds that the Respondent’s use of the disputed domain name, which has the effect of redirecting Internet users interested in the Complainant’s products and services to its own website for presumed commercial gain, not only does not constitute legitimate noncommercial or fair use, but also constitutes bad faith on the part of the Respondent. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

The failure by the Respondent to answer the Complainant’s above-mentioned cease-and-desist letter is further evidence of bad faith. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806.

Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings, again, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, including those advanced above by the Complainant, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

7. Decision

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 <pentairprotec.com> be transferred to the Complainant.

Ian Blackshaw
Sole Panelist
Date: February 7 2017