Watts Water Technologies Inc. v. Jin Tongwatesi
Claim Number: FA1208001457832
Complainant is Watts Water Technologies Inc. (“Complainant”), Massachusetts, USA. Respondent is Jin Tongwatesi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chinawattsvalve.com>, registered with Todaynic.com, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2012; the National Arbitration Forum received payment on August 23, 2012.
After numerous requests, the Registrar, Todaynic.com, Inc, has not confirmed to the National Arbitration that the <chinawattsvalve.com> domain name is registered with Todaynic.com, Inc or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On August 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2012 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@chinawattsvalve.com. Also on August 29, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <chinawattsvalve.com> domain name is confusingly similar to Complainant’s WATTS mark.
2. Respondent does not have any rights or legitimate interests in the <chinawattsvalve.com> domain name.
3. Respondent registered and used the <chinawattsvalve.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant was founded in 1874 and offers pressure reducing valves to regulate steam and relief valves for the water heaters and boilers under the WATTS mark. Complainant owns trademark registrations for its WATTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 563,758 registered September 9, 1952) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 856,788 registered July 21, 1996).
Respondent registered the <chinawattsvalve.com> domain name on June 13, 2011. Respondent previously used the <chinawattsvalve.com> domain name to resolve to a website that sold Complainant’s products without Complainant’s authorization, but currently resolves to an inactive website.
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."
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.
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.”).
The Panel finds that Complainant has established rights in its WATTS mark through its trademark registrations with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <chinawattsvalve.com> domain name is confusingly similar to Complainant’s mark, as it contains the entire WATTS mark, the geographic term “china,” the descriptive term “valve,” and the generic top-level domain (“gTLD”) “.com.” These additions to Complainant’s WATTS mark fail to adequately distinguish the disputed domain name from the mark. Therefore, the Panel finds that Respondent’s <chinawattsvalve.com> domain name is confusingly similar to Complainant’s WATTS mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known by the <chinawattsvalve.com> domain name. Complainant asserts that Respondent is not sponsored by, or affiliated with, Complainant in any way and Complainant did not give Respondent permission to use Complainant’s WATTS mark. The WHOIS information identifies “Jin Tongwatesi” as the registrant of the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <chinawattsvalve.com> domain name under 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).
Complainant avers that Respondent previously used the <chinawattsvalve.com> domain name to resolve to a website that sold Complainant’s products without Complainant’s authorization. The Panel finds that Respondent’s use of the <chinawattsvalve.com> domain name to sell Complainant’s products is not a Policy ¶ 4(c)(i) bona fide offering goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant argues that Respondent’s <chinawattsvalve.com> domain name currently resolves to an inactive website. The Panel finds that Respondent’s failure to make an active use is also not a Policy ¶ 4(c)(i) bona fide offering goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <chinawattsvalve.com> domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel notes that Respondent previously used the <chinawattsvalve.com> domain name to sell Complainant’s products, in direct competition with the sale of Complainant’s products by Complainant. Thus, Respondent is disrupting Complainant’s business, evidence of bad faith according to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Respondent’s <chinawattsvalve.com> domain name currently resolves to an inactive website. Respondent’s failure to make an active use of the <chinawattsvalve.com> domain name constitutes evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, according to Complainant, Respondent had constructive or actual knowledge of Complainant’s rights in the WATTS mark. Complainant claims that Respondent’s knowledge of Complainant’s mark is evidenced by Respondent’s use of the mark on the previously resolving website and the sale of Complainant’s products. The Panel agrees and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chinawattsvalve.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 27, 2012
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