Watts Water Technologies Inc. v. Su Zhou Wo Ci Guan Dao Ji Dian You Xian Gong Si / Wang Qiao Yi
Claim Number: FA1312001533901
Complainant is Watts Water Technologies Inc. (“Complainant”), Massachusetts, USA. Respondent is Su Zhou Wo Ci Guan Dao Ji Dian You Xian Gong Si / Wang Qiao Yi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watts-valve.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2013; the National Arbitration Forum received payment on December 17, 2013.
On December 12, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <watts-valve.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 December 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2014 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@watts-valve.com. Also on December 17, 2013, 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 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Complainant owns the WATTS mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 563,758, registered September 27, 1952).
ii. Complainant owns the WATTS mark through its trademark with numerous trademark registrations world-wide, including registrations with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 856,788, registered on July 21, 1996).
iii. Complainant uses the WATTS mark in connection with its business manufacturing devises for the plumbing, heating, and water quality markets. Complainant’s efforts include manufacturing of pressure reducing and relief values.
iv. Complainant has made significant investment to advertise and promote the WATTS mark such that it has gained significant notoriety in North America, Asia, and Europe.
i. Policy ¶ 4(a)(i)
1. The <watts-valve.com> domain name is confusingly similar to Complainant’s WATTS mark as the domain name merely adds a hyphen and the term “valve” to Complainant’s mark. The term “valve” is descriptive of Complainant’s business as Complainant manufactures and sells values as part of its operations, and therefore, the inclusion of the term increases the impression that the disputed domain name is connected to Complainant. Further, the addition of generic top-level domain (“gTLD”) is irrelevant to the confusing similarity analysis.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the subject domain name as demonstrated by the WHOIS record. Further, Complainant has not licensed or otherwise authorized Respondent to use the mark.
2. Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent is using the disputed domain name to direct users to a website that offers the same goods that Complainant provides.
3. Respondent is passing itself off as Complainant by using Complainant’s blue “W” logo and offering goods related to Complainant’s business. Such imitation demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name.
iii. Policy ¶ 4(a)(iii)
1. Respondent is using the <watts-valve.com> disputed domain to sell goods related to Complainant’s business, which disrupts Complainant’s business and is therefore evidence of bad faith.
2. Respondent is intentionally misleading users to its own website by creating the appearance that the disputed domain name is affiliated with Complainant. Respondent presumably obtains commercial benefit from the resulting confusion.
3. Respondent is attempting to pass itself off as Complainant. Respondent is using a blue “W” logo that resembles Complainant’s logo on a website that offers the same products as Complainant. Such imitation demonstrates that Respondent is using the disputed domain name in bad faith.
4. Respondent knew, or should have known, that Complainant owned rights in the WATTS mark at the time Respondent registered the disputed domain name. Such knowledge is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.”).
Complainant uses the WATTS mark in connection with its business manufacturing devises for the plumbing, heating, and water quality markets. Complainant’s efforts include manufacturing of pressure reducing and relief values. Complainant claims to own the WATTS mark through its trademark registrations with the USPTO (e.g., Reg. No. 563,758, registered September 27, 1952). Further, Complainant claims to own the WATTS mark through its trademark with numerous trademark registrations world-wide, including registrations with SAIC (e.g., Reg. No. 856,788, registered on July 21, 1996). Consistent with past UDRP decisions, the Panel finds that Complainant’s trademark registrations with numerous agencies, including the USPTO and SAIC, establishes Complainant’s rights in the WATTS mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Dev. Co., L.P. v. Wu Wenbing, FA 1294944 (Nat. Arb. Forum Dec. 31, 2009) (“The Panel finds Complainant has sufficiently established rights in the HP mark . . . through its numerous registrations with many governmental trademark authorities . . . including the State Intellectual Property Office of the People’s Republic of China . . . and the United States Patent and Trademark Office . . .”).
Complainant argues that the <watts-valve.com> domain name is confusingly similar to Complainant’s WATTS mark because the domain name merely adds a hyphen, a gTLD, and the term “valve” to Complainant’s mark. Complainant urges that the term “valve” is descriptive of Complainant’s business, as Complainant manufactures and sells valves as part of its commercial operations. Therefore, Complainant argues that the inclusion of the term increases the impression that the disputed domain name is connected to Complainant. Further, Complainant argues that the addition of a gTLD is irrelevant to the confusing similarity analysis. Previous panels have determined that a disputed domain name that incorporates a complainant’s mark with the additions of a descriptive word, a hyphen, and gTLD, is confusingly similar in spite of the alterations. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel finds that the additions of a hyphen, a term descriptive of Complainant’s business (such as “valves”), and the gTLD “.com” are insufficient to differentiate the subject <watts-valve.com> domain name from the WATTS mark, and therefore finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <watts-valve.com> domain name. In so arguing, Complainant contends that Respondent is not commonly known by the subject domain name as demonstrated by the WHOIS record. The Panel notes that the WHOIS information indicates that “Wang Qiao Yi / Su Zhou Wo Ci Guan Dao Ji Dian You Xian Gong Si” is the listed registrant of the disputed domain name. Further, Complainant contends that it has not licensed or otherwise authorized Respondent to use the mark. Respondent has failed to submit a Response in this proceeding to refute any of Complainant’s contentions. Because the available record, including the WHOIS information, does not show otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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).
Complainant further argues that Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant contends that Respondent is using the disputed domain name to direct users to a website that offers the same type of goods that Complainant provides. Complainant included a screenshot of the webpage resolving from the disputed domain name in an exhibit. The screenshot shows that the page includes a tab that prompts users to “products,” and includes photographs of fluid control products. Previous panels have determined that a respondent lacks rights and legitimate interests where the respondent uses a disputed domain name to operate a website that diverts users away from the complainant to offer similar products to those of the complainant. 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).”). Therefore, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), as Respondent is attempting to attract internet users to a confusingly similar domain name to offer goods related to and competing with Complainant.
Complainant urges that Respondent is passing itself off as Complainant by using a blue “W” logo similar to Complainant’s own logo and offering goods related to Complainant’s business. Complainant argues that such imitation demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that Respondent includes the phrase “Watts Fluid Control Co., Ltd.” on its website’s banner. Previous panels have determined that a respondent’s use of a disputed domain name to pass itself off as the complainant is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). The Panel agrees that Respondent’s imitations amount to passing off, and therefore finds that Respondent is not using the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii), respectively.
Complainant has proven this element.
Complainant argues that Respondent is using the <watts-valve.com> disputed domain to sell goods related to Complainant’s business, which disrupts Complainant’s business and is therefore evidence of bad faith. The screenshot shows that the page includes a tab that links users to “products.” Further, the screenshot includes photographs of fluid control products. As Complainant operates within the fluid control field, the Panel agrees that the Respondent’s efforts through the <watts-valve.com> disputed domain disrupt Complainant’s business as the two enterprises appear to be competing, and therefore the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant argues that Respondent is intentionally misleading users to its own website by creating the appearance that the disputed domain name is affiliated with Complainant. Complainant presumes that Respondent obtains commercial benefit from the resulting confusion and diversion. Complainant notes that the resolving page includes a logo that resembles Complainant’s own logo and offers similar products as those sold by Complainant under the WATTS mark. Complainant urges that these similarities mislead users to believe that the site is associated with Complainant. Previous panels have found evidence of bad faith where the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by offering products and information related to Complainant. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods). Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).
Similarly, Complainant argues that Respondent is attempting to pass itself off as Complainant. Complainant points out that Respondent is using a blue “W” logo that resembles Complainant’s logo on a website that offers the same products as Complainant. Complainant argues that such imitation demonstrates that Respondent is using the disputed domain name in bad faith. Previous panels have found in similar circumstances, where the respondent imitates the complainant in order to profit, mislead the public, or perpetrate fraud that the respondent had acted in bad faith. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Here, Complainant argues that the comparable “W” logo used on Respondent’s page plus the fact that Respondent provides fluid control-related products and information such that it purports to be affiliated with Complainant, constitutes as passing off. The Panel agrees that such efforts amount to passing off, the Panel finds evidence of bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent knew, or should have known, that Complainant owned rights in the WATTS mark at the time Respondent registered the disputed domain name. Complainant argues that such knowledge is further evidence of Respondent’s bad faith. Generally, previous panels have not regarded constructive notice to be sufficient for a finding of bad faith. 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."). However, Complainant is correct in saying that a respondent’s actual knowledge of a complainant’s rights in the mark is evidence of bad faith. In See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the panel found that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name." In the present case, Respondent uses the disputed domain name to present information and products related to the fluid control field, of which Complainant is a significant player. Therefore, the panel finds that Respondent had actual knowledge of Complainant’s rights in the WATTS mark at the time the disputed domain name was registered, and therefore finds that Respondent registered the <watts-valve.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <watts-valve.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 16, 2014
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