WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pentair, Inc. v. yangzhichao/Domain Admin, Information Privacy Protection Services Limited

Case No. D2015-1120

1. The Parties

The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America, represented by Roetzel & Andress LPA, United States of America.

The Respondent is yangzhichao of Hefei, Anhui, China; Domain Admin, Information Privacy Protection Services Limited of Hangzhou, Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <pentairrebate.com> (the "Disputed Domain Name") is registered with Hangzhou AiMing Network Co., LTD (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2015. On July 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2015, 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 July 3, 2015 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 July 15, 2015.

On July 3, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On July 10, 2015, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not submit its comments within the specified due date.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on July 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 6, 2015.

The Center appointed Kar Liang Soh as the sole panelist in this matter on August 21, 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 sells various products including pumps, water storage tanks, water filtration, reverse osmosis, deionization, desalination, pool and spa products and other associated products. The Complainant has been using trademarks featuring the word PENTAIR (collectively, the "PENTAIR Trademark") in relation to these products since 1999 in the United States and other countries.

The PENTAIR Trademark is registered in various jurisdictions, including:

The Complainant also holds registrations for the domain names incorporating the word PENTAIR, including <pentair.com>, <pentairwater.com> and <pentairpool.com>.

The Respondent's identity was revealed by the Registrar only after the original Complaint was filed due to the veil of a privacy service. The Respondent appears to be an individual based in China. Besides the information provided by the Registrar, not much else about the Respondent is known.

The Disputed Domain Name was registered on December 26, 2014 and resolved to a parking webpage as of June 30, 2015 offering links purporting to relate to pool cleaning subject matter. One of these links was entitled "Pentair Pool Cleaners". Another link entitled "Swimming Pool Cleaner" referred a visitor a page on the third party website "www.polarispool.com". On January 12, 2015 and February 6, 2015, the Complainant issued a letter of demand to the privacy service shielding the Respondent's identity. The Complainant did not receive a reply.

5. Parties' Contentions

A. Complainant

The Complainant contends that:

1) The Disputed Domain Name is identical or confusingly similar to the PENTAIR Trademark. It incorporates the word PENTAIR as a key element and merely adds the term "rebate". The addition is not sufficient to differentiate or distinguish the Disputed Domain Name from the PENTAIR Trademark and the Complainant's own domain name registrations. The term "rebate" exacerbates confusion by suggesting to consumers that they might obtain rebates on the Complainant's goods;

2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. There is no indication that the Respondent is making demonstrable reparations to use the same. The Respondent is seeking to capitalize on the Complainant's goodwill in the PENTAIR Trademark by diverting Internet users in violation of the Complainant's trademark rights. The Respondent is not commonly known by the Disputed Domain Name or the word "Pentairrebate". The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. The Complainant is not affiliated with the Respondent in any manner and has not had any contact with the Respondent other than sending letters of demand; and

3) The Disputed Domain Name was registered and is being used in bad faith. The Respondent has intentionally attempted to redirect Internet users seeking information on the Complainant's pool products to websites displaying links to unrelated content, including that of the Complainant's competitors. The Respondent is luring consumers to other websites by making them believe that these are affiliated with or endorsed by the Complainant. The Respondent is taking advantage of the confusing similarity between the Disputed Domain Name and the PENTAIR Trademark to profit from the goodwill associated with the PENTAIR Trademark. The Respondent did not respond to the Complainant's demand letters.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement of the Disputed Domain Name is Chinese in this case and the default language of the proceeding is accordingly Chinese. The Panel observes that the language of a registration agreement may not be immediately apparent to a complainant under the Policy. In this case, the Complainant had fairly believed that the registration agreement was in English on the basis that the registration agreement presented to the Complainant upon visiting the Registrar's web resource was in English.

In some cases, determining the language of a registration agreement is no longer as simple as in the past. It would seem that until the language of the registration agreement is confirmed by Registrar, it may not be easy for the Complainant to determine the language of the registration agreement with any reliable certainty. However, by the time Registrar verification occurs, a complaint would have to be prepared and submitted first.

Be that as it may, in the interest of fairness to the parties and efficacy of this proceeding, the Panel is empowered broadly under paragraph 10 of the Rules to conduct the proceeding. In the present instance, the Complainant had already submitted the Complaint in English on a fair belief that the language of the registration agreement was English. The Respondent has neither responded nor challenged the Complainant's request for English to be adopted. It would appear from the website resolved from the Disputed Domain Name that the Respondent is comfortable with English as a medium of communication.

Having considered these circumstances, the Panel orders that the English shall be the language of the proceeding pursuant to paragraph 11(a) of the Rules.

6.2 Discussion

The Complainant is required to show that all three limbs of paragraph 4(a) of the Policy are made out on the evidence. The Panel now turns to consider each of these three limbs.

A. Identical or Confusingly Similar

The evidence shows that the PENTAIR Trademark was registered at least some years before the registration of the Disputed Domain Name. There is no doubt that the Disputed Domain Name incorporates the PENTAIR Trademark in its entirety. The Panel accepts the Complainant's submission that the addition of the descriptive suffix "rebate" to the PENTAIR Trademark in the Disputed Domain Name does not assist to distinguish the Disputed Domain Name from the PENTAIR Trademark.

Therefore, the Panel has no difficulty concluding that the Disputed Domain Name is confusingly similar to the PENTAIR Trademark in which the Complainant has rights. The first limb of paragraph 4(a) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant has confirmed that it has no relationship or prior communication with the Respondent before the registration of the Disputed Domain Name. There is no evidence before the Panel to suggest that the Respondent is known by the Disputed Domain Name. There is also no evidence that the Respondent is making any fair noncommercial use of the Disputed Domain Name. The Panel accepts that maintaining a parking webpage per se does not qualify as any form of fair noncommercial use.

It is the consensus of past UDRP panels that a complainant in a UDRP proceeding needs only to establish a prima facie case under the second limb of paragraph 4(a) of the Policy, following which the burden of production shifts to the respondent to refute the same.

The Panel is satisfied that the Complainant has established a prima facie case in the present instance. Since no Response was filed, the prima facie case stands.

C. Registered and Used in Bad Faith

The Disputed Domain Name was registered a few years after the PENTAIR Trademark was registered. The reference to "Pentair Pool Cleaners" on the website resolved from the Disputed Domain Name clearly shows that the Respondent is aware of the existence of the PENTAIR Trademark and the products associated with it. Considering that the website refers mainly to products of like nature and nothing else, the inference that the Respondent registered the Disputed Domain Name with knowledge of the PENTAIR Trademark is unavoidable and reasonable.

Paragraph 4(b)(iv) of the Policy exemplifies the following situation as bad faith registration and use:

"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."

The website resolved from the Disputed Domain Name makes copious references to pool cleaning and related products and services which appear to compete with those of the Complainant. These references appear to be links which the Complainant claims to be "pay-per-click" advertisements. It is evident on the face of the resolved website that these links are advertisements posted by a third party with the permission of the Respondent. It is not unforeseeable that such advertisements are in all likelihood of a "pay-per-click" nature, although the Complainant has not provided any direct evidence as such. Furthermore, the Respondent has not refuted such allegation.

Taking into consideration the above and the fact that the suffix in the Disputed Domain Name is the word "rebate", it is inconceivable that the Respondent has no commercial intent and that the website does not commercial gain as at least one of its objects. The Panel has already stated its finding above that the Disputed Domain Name is confusingly similar to the PENTAIR Trademark. The Complainant has made a strong allegation that the Respondent was taking advantage of the confusing similarity between the Disputed Domain Name and the PENTAIR Trademark to profit from the goodwill associated with the PENTAIR Trademark. Should this be untrue, a reasonable person in the position of the Respondent would have denied such allegation. The absence of a reaction from the Respondent to such a series accusation is telling in this case and the Panel draws a negative inference against the Respondent that the Respondent is unable to refute the allegation.

On the balance of probabilities, the Panel takes the view that the Respondent was using the Disputed Domain Name to intentionally attempt to attract for commercial gain Internet users to the website resolved from it by creating a likelihood of confusion with the PENTAIR Trademark as to the source, sponsorship, affiliation, or endorsement of the website or of the products and services on the website.

Having made this finding, the Panel holds that the third limb of paragraph 4(a) of the Policy as exemplified by paragraph 4(b) of the Policy is made out in the circumstances.

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, <pentairrebate.com>, be transferred to the Complainant.

Kar Liang Soh
Sole Panelist
Date: September 21, 2015