WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pentair, Inc. v. Contact Privacy Inc. Customer 0130667254 / Mehmet Gulener, Eliks Cevre Teknoljileri
Case No. D2016-1908
1. The Parties
The Complainant is Pentair, Inc. of Golden Valley, Minnesota, United States of America ("United States"), represented by Roetzel & Andress LPA, United States.
The Respondent is Contact Privacy Inc. Customer 0130667254 of Toronto, Ontario, Canada / Mehmet Gulener, Eliks Cevre Teknoljileri of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <pentairturkey.com> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2016, 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 September 27, 2016 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 September 27, 2016.
The Respondent sent email communications to the Center on September 27, 2016 and September 28, 2016.
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 October 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2016. The Respondent did not submit any formal response to the Complainant's contentions. Accordingly, the Center notified the Respondent's default on October 27, 2016.
The Respondent sent an email communication to the Center on October 31, 2016, to which the Complainant replied on November 14, 2016.
The Center appointed Gökhan Gökçe as the sole panelist in this matter on November 1, 2016. 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
Pentair Inc. is a global water, fluid, thermal management, and equipment protection partner with industry leading products, services, and solutions.
The Complainant is the owner of the registered trademark PENTAIR as a word and figurative mark in several classes in many countries, including Turkey where the Respondent is located. A list of these trademark registrations is attached to the Complaint. The Complainant has provided evidence of its United States trademark for PENTAIR, no. 4,348,967, registered on July 9, 2002. The earliest protection date as listed in the Turkish government trademark registry with respect to PENTAIR is August 27, 2012 (application no. 2012/73243, registered on June 27, 2014).
The Complainant has also registered domain names which include the trademark PENTAIR under several generic Top-Level Domains ("gTLD") and country-code Top-Level Domains ("ccTLD"), <pentair.com> (created on October 17, 1996) and <pentairwater.com> (created on July 27, 1999). The registration of these domain names predates the registration of the disputed domain name. The Complainant also registered the <pentair.com.tr> on April 29, 2016.
The Complainant submitted certain print screens of the website under the disputed domain name which show that the Respondent is using the PENTAIR trademark in both text and logo format and is using the disputed domain name <pentairturkey.com> for the apparent sale of water filters and related goods and services, including those of the Complainant without the permission of the Complainant.
The Panel visited the disputed domain name on November 11, 2016, and observed that the disputed domain name was inactive, thus there was no content provided. The disputed domain name contained a sentence as "The webpage cannot be found".
5. Parties' Contentions
A. Complainant
In accordance with the Policy, the Complainant requests that the disputed domain name be transferred to it. The Complainant submits the grounds for these proceedings listed in paragraph 4(a) of the Policy.
Identical or Confusingly Similar
The Complainant asserts that the disputed domain name comprises the term "pentair" which is identical to its registered trademark PENTAIR.
The Complainant asserts that the disputed domain name is confusingly similar to its well-known trademarks PENTAIR as they incorporate the whole of Complainant's PENTAIR trademark. The Complainant states that the addition of "turkey" which is a geographical element and the addition of a gTLD, ".com", does not have an impact on the overall impression of the dominant part of the disputed domain name and does not avoid the finding of confusing similarity. The Complainant states that the complete incorporation of a complainant's trademark creates sufficient similarity between the mark and the domain name.
The Complainant also asserts that disputed domain name is substantially identical, and thus confusingly similar phonetically, visually, and in overall commercial impression, to the Complainant's <pentair.com> and <pentairwater.com> domain names and trademarks.
Rights or Legitimate Interests
The Complainant alleges that the Respondent is not and has never been one of the Complainant's representatives or one of its licensees, nor is he otherwise authorized to use the Complainant's trademark. The Respondent does not have any rights or legitimate interests in the disputed domain name.
The Complainant argues that the Respondent is in no way authorized to use the Complainant's PENTAIR trademark in the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent is trying to take unfair advantage of the goodwill associated with the Complainant's well-known trademark. The Respondent states that the disputed domain name resolves to a website where the PENTAIR logo is featured prominently in the headline and that the Respondent creates the impression that the disputed domain name is associated with the Complainant's trademarks. The Complainant asserts that (i) the disputed domain name is not only being used to sell the trademarked goods, but also competing goods, (ii) the Respondent does not accurately and prominently disclose the Respondent's relationship with the Complainant as the trademark holder.
The Complainant states that the Respondent has no prior rights or legitimate interests in the disputed domain name. The Respondent never used term "pentair" in any way before or after the Complainant started their business. The Complainant also alleges that the Respondent is not commonly known as "pentairturkey.com", "pentairturkey", or "pentair". Rather, the named Respondent in this case appears to be called "Eliks", which clearly does not incorporate or include the term "pentair".
Registration and Use in Bad Faith
The Complainant indicates that the disputed domain name has been registered in bad faith. The Complainant argues that the Respondent has, by using the disputed domain name, intentionally attempted to redirect Internet users seeking information on the Complainant's products to websites displaying its own content, including the unauthorized use of the Complainant's PENTAIR trademark, other trademarks,
and trade dress.
The Complainant also added that the Respondent takes unfair advantage of the reputation of the Complainant's trademark.
Before introducing this UDRP action, the Complainant sent cease-and-desist letters dated June 24, 2016 to the Respondent however the Respondent did not respond at all to the Complainant's cease-and-desist letter. Therefore, the Complainant asserts that continued use of the disputed domain name thereafter may be evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
The Center received several informal email communications in both English and Turkish from the Respondent stating that it does not speak English and requesting the Complaint to be translated into Turkish. The Respondent further stated in its email that the website at the disputed domain name was shut down and that from now on the disputed domain name will not be used for any commercial purpose; however as the Respondent is still the owner of the disputed domain name, the latter can be transferred only if the Complainant pays for it.
6. Discussion and Findings
6.1. Language of the Proceeding
The Panel notes that the Respondent has filed email communications in the Turkish language. In this regard the Panel further notes that under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. In the present case, as confirmed by the Registrar, the Respondent selected to register the disputed domain name in English using an English Registration Agreement is English and, in the circumstances, the Complaint was submitted in English.
The Panel hereby decides that English shall be the language of the administrative proceeding in the present case. The Panel has however considered the email communications in Turkish by the Respondent.
6.2. Substantive Issues
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to the trademark 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.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all these requirements are fulfilled.
A. Identical or Confusingly Similar
The Policy requires the Complainant to demonstrate that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel is satisfied that the Complainant is the owner of the trademark PENTAIR as evidenced in the annexes to the Complaint. The Panel concurs with the opinion of prior UDRP panels which have held that, when a domain name wholly incorporates a complainant's registered mark that may be sufficient to establish confusing similarity for purposes of the Policy. Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle,
WIPO Case No. D2005-1105; Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
WIPO Case No. D2000-0047.
In relation to the disputed domain name <pentairturkey.com>, it is clear that it fully incorporates the Complainant's trademark and the only difference between the disputed domain name and the Complainant's trademark is the addition of the geographical term "turkey" and the ".com" extension. Moreover, the use of a trademark in its entirety with the addition of a geographical term does not negate the confusing similarity with the trademark. Playboy Enterprises International Inc. v. Joao Melancia,
WIPO Case No. D2006-1106; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,
WIPO Case No. D2005-0755.
The Panel further finds that the addition of the ".com" extension is typically irrelevant when determining whether the disputed domain name is confusingly similar to the complainant's trademark. PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,
WIPO Case No. D2001-0174; Ahmanson Land Company v. Vince Curtis,
WIPO Case No. D2000-0859.
The Panel recognizes the Complainant's rights and concludes that the disputed domain name is confusingly similar to the Complainant's PENTAIR trademark. Therefore, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are established.
B. Rights or Legitimate Interests
In accordance with paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is established in numerous UDRP decisions that it is difficult for a complainant to prove a negative and for that reason the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in a domain name, Belupo d.d. v. WACHEM d.o.o.,
WIPO Case No. D2004-0110. Once the complainant establishes a prima facie case, the burden of demonstrating rights or legitimate interests in the disputed domain name shifts to the respondent. The Policy, paragraph 4(c) provides various non-limitative ways in which the respondent may demonstrate rights or legitimate interests in a domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In its Complaint, the Complainant has provided prima facie evidence that the Respondent has no rights or legitimate interests in using the Complainant's PENTAIR trademark in the disputed domain name.
Pursuant to Annex 7 of the Complaint, the disputed domain name resolved to a website in Turkish that offers the Complainant's products and contains the Complainant's trademarks as well as competing products, from which the Panel concludes that the Respondent clearly suggested a business relationship with the Complainant. Taking into consideration the fact that the website is not used to sell only the trademarked goods and that the website does not adequately disclose the Respondent's relationship with the Complainant, the Panel finds that the Respondent does not meet the criteria determining whether a reseller's offering may be characterized as bona fide for purposes of the UDRP, laid down in Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903.
The Panel understands that the Complainant has not granted the Respondent any right or license to use the PENTAIR trademark. Therefore, in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the disputed domain name could be claimed by the Respondent. Guerlain S.A. v. Peikang,
WIPO Case No. D2000-0055.
Furthermore, when the Panel visited the disputed domain name, the Panel determined that the disputed domain name is inactive. The Panel cannot imagine any potentially legitimate interest that the Respondent might have in the disputed domain name based on the manner in which the disputed domain name have been used on the inactive websites. Philip Morris USA Inc. v. Elijah Etame,
WIPO Case No. D2016-0968.
Also, the Respondent has no prior rights or legitimate interest in the disputed domain name. The Respondent has apparently not used the term "pentair" in any way, other than in respect of the domain name at issue, before or after the Complainant started their business.
The Panel finds that there is no evidence to suggest that the Respondent has any rights in any trademarks or service marks which are identical, similar or related to the disputed domain name. The Panel accepts that the Respondent is not commonly known by the disputed domain name and that the Respondent has acquired no trademark or service mark rights.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 location or of a product or service on the respondent's website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark PENTAIR, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey where the Complainant is known in its sector, was aware of the Complainant and its PENTAIR trademark at the time of registration of the disputed domain name. Further, the Respondent's website associated with the disputed domain name contained the PENTAIR trademark and logo, and offered the Complainant's trademarked products for sale. Therefore, the Respondent was likely aware of the Complainant's trademark PENTAIR at the time the disputed domain name was registered(Ebay Inc. v. Wangming,
WIPO Case No. D2006-1107), the Panel believes that the awareness of the Complainant's trademark at the time of the registration of the disputed domain name has to be considered as an inference of bad faith registration.
In this connection, noting again its finding under Section 6.B, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website under the disputed domain name, 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 location or of a product or service on the respondent's website, which circumstance may be treated as evidence of bad faith in accordance with paragraph 4(b)(iv) of the Policy.
Furthermore, in its email of September 28, 2016, the Respondent stated that the disputed domain name was shut down, that it will no longer be used for any commercial purpose and finally offered the disputed domain name for sale to the Complainant. Having confirmed that the disputed domain name is indeed inactive, the Panel considers that the Respondent is passively holding the disputed domain name. "Passive holding" has been accepted as a bad faith indicator in a number of UDRP cases. See, inter alia, Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Therefore, in light of the above-mentioned circumstances in the present case, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
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 <pentairturkey.com> be transferred to the Complainant.
Gökhan Gökçe
Sole Panelist
Date: November 14, 2016
