Watts Water Technologies Inc. v. Xinyu Wang
Claim Number: FA1212001477256
Complainant is Watts Water Technologies Inc. (“Complainant”), Massachusetts, USA. Respondent is Xinyu Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <china-watts.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 24, 2012; the National Arbitration Forum received payment on December 24, 2012.
On December 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <china-watts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 December 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 15, 2013 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@china-watts.com. Also on December 26, 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 January 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. Respondent has not been commonly known by the disputed domain name. Respondent is not sponsored or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s marks in a domain name.
ii. Respondent is using the disputed domain name to sell products that directly compete with Complainant’s own offerings.
i. Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits.
ii. Respondent was obviously aware of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that for many years has been an international manufacturer of Innovative Water Solutions for the plumbing & heating and water quality markets. It formed its first joint venture in China in 1994 and has since then been actively engaged in business in China.
2. Complainant owns trademark registrations for the WATTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 563,758, registered September 9, 1952) and China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 856,788, registered July 21, 1996).
3. Respondent registered the <china-watts.com> domain name on June 25, 2012. It resolves to a website used to promote the products of a competitor of Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant, Watts Water Technologies Inc., contends that it is an international manufacturer of Innovative Water Solutions for the plumbing & heating and water quality markets. Complainant asserts that it expanded its international presence, including the formation of its first joint venture in China in 1994. Complainant contends that it operates a primary website at <watts.com>, which is visited by more than 130,000 unique visitors per month. Complainant argues and shows that it owns trademark registrations for the WATTS mark with the USPTO (e.g., Reg. No. 563,758, registered September 9, 1952) and SAIC (e.g., Reg. No. 856,788, registered July 21, 1996). See Complainant’s Exhibit A. The Panel notes that Respondent appears to reside in China. Therefore, the Panel concludes that Complainant’s registrations of its WATTS mark with the USPTO and SAIC are sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WATTS mark. Complainant argues that Respondent’s <china-watts.com> domain name is confusingly similar to the WATTS mark as it adds the non-distinctive geographically descriptive term “China” separated with a hyphen to Complainant’s WATTS mark. The Panel finds that the addition of a geographic term does not distinguish Respondent’s domain name from Complainant’s 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). The Panel also finds that the addition of a hyphen does not negate Respondent’s use of the disputed domain name under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel determines that the addition of a gTLD does not eliminate confusing similarity between Respondent’s domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Accordingly, the Panel concludes that Respondent’s <china-watts.com> domain name is confusingly similar to Complainant’s WATTS mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WATTS mark and to use it in its domain name, adding only the geographic identifier “china” before the trademark, which can only convey to the internet user that the domain name relates to the goods and services of Complainant available in China and that the domain name will lead to a website dealing with the same subject, neither of which is true;
(b) Respondent has then used the domain name to link to a website constructed to give the impression that it is a website of Complainant and containing links to the products of a competitor of Complainant ;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent has not been commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “Xinyu Wang” as the registrant of the disputed domain name. See Complainant’s Exhibit B. Complainant asserts that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant argues that it has not given Respondent permission to use Complainant’s marks in a domain name. The Panel notes that Respondent has not provided any additional evidence showing that it is commonly known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant asserts that Respondent is using the disputed domain name to sell products that directly compete with Complainant’s own offerings. Complainant argues that a variation of Complainant’s full name, Watts Water Technologies, is included on the website available at the disputed domain name as “Tianjin Tanggu Watts Valve Water Technologies Co., Ltd.” See Complainant’s Exhibit E. Complainant argues that the term “WATTS” is not a natural term used to describe valves, and Respondent’s inclusion of the term is a direct effort to take advantage of Complainant’s brand. The Panel notes that Respondent is using the disputed domain name to sell valves that directly compete with Complainant’s products. Accordingly, the Panel concludes that Respondent’s use of the disputed domain name to sell products that directly compete with Complainant 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 Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website to which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits. Complainant argues that Respondent has caused the website reachable by the disputed domain name to display and sell products of a competitor. See Complainant’s Exhibit E. Therefore, the Panel determines that Respondent’s use of the disputed domain name to sell products that compete with Complainant constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Secondly, Complainant contends that Respondent was obviously aware of Complainant’s trademark rights. Complainant alleges that its company and WATTS mark are known internationally and that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” Complainant’s mark at the time it registered the disputed domain name. Complainant argues that Respondent’s knowledge of Complainant’s rights in the WATTS mark is evidenced by the use of the geographic term “China,” where Complainant initially formed its first joint venture. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the Respondent’s use of Complainant's mark and the geographic term indicating the location where Complainant formed its first joint venture, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the WATTS mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <china-watts.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 26, 2013
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