WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

A. O. Smith Corporation v. Kapil Kumar

Case No. D2017-1346

1. The Parties

The Complainant is A. O. Smith Corporation of Milwaukee, Wisconsin, United States of America (“United States”), represented by RNA IP Attorneys, India.

The Respondent is Kapil Kumar, of New Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <ao-smith-customer-care.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2017. On July 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2017.

The Center appointed Jane Seager as the sole panelist in this matter on August 31, 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 global water technology company that manufactures residential and commercial water heaters, boilers and water purification equipment. Founded in 1874, the Complainant’s headquarters are in Milwaukee, Wisconsin, United States and it operates in the United States, Canada, China, India, Mexico, the Netherlands, Turkey, the United Kingdom of Great Britain and Northern Ireland (“the United Kingdom”) and Viet Nam.

The Complainant has trade mark rights in the term A.O. SMITH in more than 25 countries around the world, including in India. The Complainant has supplied evidence that it owns the following trade mark registrations in India in connection with water heaters and parts thereof:

- A.O. SMITH, Trade mark Reg. No. 1668622 (word), registered on March 25, 2008 (classes 7 and 11); and

- A.O. SMITH, Trade mark Reg. No. 1968839 (word), registered on May 20, 2010 (class 11).

The Complainant’s official websites are available at ‘www.aosmith.com’ and ‘www.aosmithindia.com’.

The Domain Name was registered on February 24, 2017. It is resolving to a website prominently displaying the Complainant’s A.O. SMITH trade mark and logo and purportedly providing customer care services in India. The website associated with the Domain Name also displays the same green, white and black colour scheme that characterizes the Complainant’s official websites. At the bottom of the home page, there is a disclaimer that states as follows: “Disclaimer: Ro Service Centre is an independent Service centre. Ro Service Centre is NCR’s Largest & Fastest Growing Service Provider & We undertake job work of Service, AMC, Repair & Maintenance of RO Systems, Ro Service Centre is totally responsible for these and no relation to parent company (RO) in any regards.”

On March 30, 2017, the Complainant sent a cease and desist letter to the Respondent and a follow-up email on April 8, 2017. The Respondent did not reply to the Complainant’s communications.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is one of the world’s leading manufacturers of residential and commercial water heating equipment and boilers, as well as a manufacturer of water treatment products for residential and light commercial applications. It has approximately 15,500 employees and operates in the United States, Canada, China, India, Mexico, the Netherlands, Turkey, the United Kingdom and Viet Nam. The Complainant further asserts that in 2016 it sold products worth USD 2.69 billion and is also listed on the New York Stock Exchange (NYSE: AOS).

The Complainant asserts that it operates, manufactures and markets its products in India through its wholly owned subsidiary, A.O. Smith India Water Products Private Limited, which was incorporated in 2006. The Complainant states that it entered the Indian water heater market in July 2008 with a significant presence in Bengaluru, Delhi, Chennai and Goa, amongst other cities. The Complainant asserts that its subsidiary in India opened its 76,000 square foot residential water heater and water purifier manufacturing plant in Bangalore in 2010 and completed a significant expansion in 2013. The Complainant further states that A. O. Smith India has sales offices and stocking warehouses strategically located throughout the country as well as a sales and customer service organisation in place. The Complainant’s official website dedicated to its operations in India can be found at ‘www.aosmithindia.com’ (the domain name <aosmithindia.com> was registered on March 11, 2008).

The Complainant states that its A.O. SMITH trade mark and logo are very well-known and well recognised by the public in India. The Complainant states that its products under the A.O. SMITH brand have been extensively advertised through various media, including electronic as well as print media. The Complainant asserts that it incurs huge promotional/advertisement expenses and that due to its extensive use and publicity, the public has come to associate the A.O. SMITH brand exclusively with the Complainant. The Complainant also highlights that it has been recognised in its field and has been honoured by several awards. The Complainant further underlines that a search for the Complainant’s A.O.SMITH trade mark on popular search engines such as Google, Yahoo and Bing, show that its products and services are amongst the top results. The Complainant also states that it has extensive presence in different social networking websites, interalia, Facebook and Twitter. Thus the Complainant holds that the public at large identifies the Complainant through its trade mark and trade name A.O.SMITH.

The Complainant states that the Domain Name is confusingly similar to the Complainant’s trade mark as it incorporates the Complainant’s A.O. SMITH trade mark in its entirely. The Complainant further asserts that the use of the generic terms “customer care” does not alter the fact that the Complainant’s trade mark is the dominant portion of the Domain Name and further argues that the addition of such terms conveys to an ordinary consumer that the Domain Name relates to the customer care portal of the Complainant’s business and products.

The Complainant further asserts that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. The Complainant argues that it did not authorise the Respondent to use its trade mark. The Complainant also asserts that the Respondent is not and has never been known by the A.O.SMITH trade mark or by any similar name and argues that the WhoIs record identifies the registrant of the Domain Name as “Kapil Kumar”, which does not resemble the Domain Name in any way. The Complainant also asserts that the Respondent’s activities cannot be considered a bona fide offering of goods or services nor a legitimate non-commercial or fair use, as the Respondent is making an illegitimate use of the Complainant’s trade mark to misrepresent its service as the Complainant’s authorised service center.

The Complainant also states that the Domain Name was registered and is being used in bad faith. The Complainant argues that given the fame and prior use of the Complainant’s A.O. SMITH trade mark, it is unlikely that the Respondent would not have been aware of the Complainant’s rights at the time of registration of the Domain Name in 2017. The Complainant further argues that the Respondent’s choice of the Domain Name is not accidental but deliberate in order to derive unfair monetary advantage by offering unauthorised services to interested and unaware customers. The Complainant also argues that the Respondent’s bad faith is evidenced by the fact that the Respondent is using the Complainant’s trade mark and logo to misrepresent its business as that of the Complainant’s. The Complainant thus argues that the Respondent is intentionally attempting to attract for commercial gain Internet users to his website by misleading them and creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

The standard of proof is on the balance of probabilities (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).

Paragraph 15(a) of the Rules provides that the Panel shall decide a 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. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.

In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.

The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent’s failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Taking the aforementioned provisions into consideration, the Panel finds as follows:

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether the Complainant has established relevant trade mark rights. The Complainant has provided adequate evidence that it has registered trade mark rights in A.O. SMITH in connection with water heaters and purifiers. The Panel is therefore satisfied that the Complainant has established relevant trade mark rights.

The Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant’s trade mark. The Domain Name incorporates the Complainant’s A.O. SMITH trade mark in its entirety with the addition of the descriptive term “customer care”, separated by hyphens. The Complainant’s A.O. SMITH trade mark is clearly recognizable in the Domain Name. Prior panels deciding under the Policy have held that when a domain name wholly incorporates a complainant’s trade mark, it is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000 1525.

Furthermore, the addition of the terms “customer care” and the hyphens does nothing to diminish the confusing similarity with the Complainant’s trade mark. On the contrary, the terms “customer care” actually reinforce the confusing similarity with the Complainant’s trade mark as they refer to services provided by the Complainant and are thus likely to mislead Internet users into thinking that the Domain Name resolves to the Complainant’s official customer care portal. See Yahoo! Inc. v. Mahesh Rohatgi et alsWIPO Case No. D2015-2323 (<yahoo-customercare-number.com> et al.) (“All of the disputed domain names also add generic words which are suggestive of support or help functions. As such services are provided by the Complainant, their addition to the disputed domain names, alongside the Complainant’s mark, may only serve to increase potential confusion”).

The “.com” Top-Level Domain is generally disregarded under the identity or confusing similarity test as it is a functional element. See section 1.11 of the WIPO Overview 3.0.

The Panel therefore finds that the Domain Name is confusingly similar to the Complainant’s trade mark.

The Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:

(i) before any notice to the respondent of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

A complainant is required to establish a prima facie case that a respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name in question. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.

The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.

The Complainant has asserted that it has not authorized the Respondent to make any use of its trade mark.

The Respondent’s use of the Domain Name, which is confusingly similar to the Complainant’s trade mark, to resolve to a website that prominently displays the Complainant’s trade mark and logo and has the same “look and feel” as the Complainant’s official websites cannot be considered a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy, as the Respondent has deliberately designed the website to give the false impression to Internet users that they have reached one of the Complainant’s official customer care portal. See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services”).

There is no evidence that the Respondent is “commonly known” by the Domain Name or a similar name, in accordance with paragraph 4(c)(ii) of the Policy.

The Respondent’s use of the Domain Name, as described above, cannot be said to be a legitimate non-commercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) of the Policy as the website is clearly commercial in nature (it offers annual maintenance contracts and other repair services for a fee).

The Panel is also of the view that the Respondent’s failure to submit a response is, in the circumstances of this case, also evidence of the Respondent’s lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).

The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name.

Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:

(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed 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.

The Complainant has trade mark rights in the name A.O. SMITH in connection with water heaters and purifiers that significantly predate the date of registration of the Domain Name. The Complainant’s trade mark has also acquired considerable goodwill and renown in connection with water heaters and equipment around the world, including in India, where the Respondent is based. Given the nature of the Domain Name, which identically reproduces the Complainant’s A.O. SMITH trade mark, in conjunction with the nature of the website to which it resolves (which prominently displays the Complainant’s logo and reproduces the “look and feel” of the Complainant’s websites), the Panel is persuaded that, on balance, the Respondent had the Complainant in mind at the time of registration of the Domain Name and deliberately registered it to take advantage of the Complainant’s rights. The Panel therefore finds that the Respondent registered the Domain Name in bad faith.

The Panel further finds that the Respondent’s use of the Domain Name to resolve to a website that gives the false impression that it is operated by the Complainant when in fact it is not constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or services provided therein. The Panel is also of the view that, given the nature of Domain Name and the website itself, which appears to have been deliberately designed to give the false impression to Internet users that they have reached the Complainant’s official customer care portal, the presence of a disclaimer on the website does not cure the Respondent’s bad faith. See section 3.7 of the WIPO Overview 3.0 (“where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused”).

Finally, the Panel also draws adverse inferences from the Respondent’s failure to respond to the Complainant’s cease and desist letters and to take part in the present proceedings.

The Panel therefore finds that the Domain Name was registered and is being used in bad faith.

Accordingly, the Complainant has satisfied 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 Domain Name, <ao-smith-customer-care.com>, be transferred to the Complainant.

Jane Seager
Sole Panelist
Date: September 13, 2017