Watts Water Technologies Inc. v. TrafficMegaDeals c/o Peter
Claim Number: FA1107001398948
Complainant is Watts Water Technologies Inc. (“Complainant”), represented by Alias Encore, Inc., California, USA. Respondent is TrafficMegaDeals c/o Peter (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wattspremier.org>, registered with eNom.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 15, 2011; the National Arbitration Forum received payment on July 15, 2011.
On July 19, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <wattspremier.org> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@wattspremier.org. Also on July 21, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wattspremier.org> domain name is identical to Complainant’s WATTS PREMIER mark.
2. Respondent does not have any rights or legitimate interests in the <wattspremier.org> domain name.
3. Respondent registered and used the <wattspremier.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Watts Water Technologies Inc., was founded in 1874 and is an international manufacturer of water solutions for plumbing and heating. Complainant founded the WATTS PREMIER brand in 1989 and registered the <wattspremier.com> domain name in order to promote its new brand. Complainant holds a registered trademark for its WATTS PREMIER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,810,455 registered February 3, 2004).
Respondent, TrafficMegaDeals, registered the <wattspremier.org> domain name on February 27, 2011. The disputed domain name resolves to a website which features Complainant’s products and links to purchase the products through <amazon.com>.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims that it has established rights in the WATTS PREMIER mark. Past panels have determined that a complainant can prove its rights in a mark through trademark registration with a national authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). Complainant is not required to register its mark within the country of Respondent’s residence so long as it is registered in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Here, Complainant holds a trademark registration for its WATTS PREMIER mark with the USPTO (Reg. No. 2,810,455 registered February 3, 2004). Therefore, the Panel concludes that Complainant has proven its rights in the WATTS PREMIER mark under Policy ¶ 4(a)(i).
Complainant also maintains that Respondent’s <wattspremier.org> domain name is identical to its WATTS PREMIER mark. The disputed domain name uses the exact mark and only alters it by deleting the space between the words of the mark and adding the generic top-level domain (“gTLD”) “.org.” The Panel finds that deleting spaces does not adequately differentiate the disputed domain name. See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). The Panel also determines that the addition of a gTLD does not factor into a Policy ¶ 4(a)(i) analysis. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). The Panel concludes that Respondent’s <wattspremier.org> domain name is identical to Complainant’s WATTS PREMIER mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel explained that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). Here, Complainant has made a prima facie case in support of its claims. Due to Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests according to Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel still elects to examine the record and determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <wattspremier.org> domain name. The WHOIS information identifies Respondent as “TrafficMegaDeals c/o Peter,” which is not similar to the disputed domain name. Moreover, Complainant states that it has not licensed, authorized, or permitted Respondent to register the domain name incorporating Complainant’s WATTS PREMIER mark. In light of these findings, the Panel concludes that Respondent is not commonly known by the <wattspremier.org> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain name resolves to a website featuring Complainant’s plumbing and water quality products and links to purchase these products from <amazon.com>. Respondent likely receives click-through fees from these links and for subsequent sales directed through the disputed domain name. The Panel finds that Respondent’s use of the <wattspremier.org> domain name to offer Complainant’s products for sale through a competing commercial website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that the elements of Policy ¶ 4(a)(ii) has been satisfied.
Although Complainant does not specifically make this argument, the Panel may consider that Respondent registered and is using the disputed domain name to disrupt Complainant’s plumbing and water quality business. Complainant’s potential customers may find Respondent’s website and purchase Complainant’s goods from the <amazon.com> website instead of directly through Complainant’s official website. The Panel finds that Respondent’s registration and use of the disputed domain name does disrupt Complainant’s business and constitutes bad faith registration and use according to Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”)
The Panel infers that Respondent collects click-through fees from the featured links to <amazon.com> on the resolving website. Complainant claims that Respondent’s identical domain name, utilizing Complainant’s WATTS PREMIER mark, creates a likelihood of confusion as to Complainant’s sponsorship of the products featured. Respondent attempts to profit from this confusion by directing sales through a competing commercial website and generating click-through fees. The Panel concludes that Respondent’s registration and use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wattspremier.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 29, 2011
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