Watts Water Technologies Inc. v. Whois Agent / Domain Whois Privacy Protection Service
Claim Number: FA1410001584229
Complainant is Watts Water Technologies Inc. (“Complainant”), Massachusetts. Respondent is Whois Agent / Domain Whois Privacy Protection Service (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usawatts.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2014; the National Arbitration Forum received payment on October 20, 2014.
After numerous requests, the Registrar, Shanghai Meicheng Technology Information Development Co., Ltd., has not confirmed to the National Arbitration that the <usawatts.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. 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 October 31, 2014, the Registrar replied to the Forum with a late verification email. The Forum forwarded a copy of the Complaint to the address provided by the Registrar, discharging its duty of notification.
On October 30, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 19, 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@usawatts.com. Also on October 30, 2014, 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 November 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the WATTS mark to indicate its efforts as an international manufacturer of water solutions for plumbing and heating, and for water quality markets. Complainant has registered the WATTS mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 563,758, registered Sept. 9, 1952) and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 856,788 registered July 21, 1996). The <usawatts.com> domain name incorporates the WATTS mark alongside the geographically descriptive term “USA” and the irrelevant generic top-level domain “.com,” and therefore is confusingly similar to the mark.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has not given Respondent permission to use the mark in a domain name, nor is Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. Further, Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. Respondent is using the disputed domain name to imitate Complainant by displaying Complainant’s blue “W” logo and Complainant WATTS mark while offering the same goods that Complainant provides.
iii) Respondent registered and is using the disputed domain name in bad faith. First, Respondent is using the disputed domain name to promote an imitation website at which Respondent offers goods in competition with Complainant. This constitutes a disruption of Complainant’s business and therefore warrants a finding of Policy ¶ 4(b)(iii) bad faith. Second, Respondent’s efforts to imitate Complainant in hopes of generating increased traffic to Respondent’s website for commercial amounts to Policy ¶ 4(b)(iv) bad faith. Third, Respondent had Complainant and its WATTS mark in mind at the time the disputed domain name was registered. Such actual knowledge can be gleaned from Respondent’s imitation of Complainant’s website, the metadata associated with the disputed domain name (promoted terms relied on by search engines to link a user’s search term with relevant online content), and the fame of Complainant’s mark.
B. Respondent
Respondent did not submit a response. The <usawatts.com> domain name was registered on May 27, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 purportedly uses the WATTS mark to indicate its efforts as an international manufacturer of water solutions for plumbing and heating, and for water quality markets. Complainant has registered the WATTS mark with the USPTO (e.g., Reg. No. 563,758, registered Sept. 9, 1952) and with SAIC (e.g., Reg. No. 856,788 registered July 21, 1996), and argues that such registration evince rights in the mark for purposes of Policy ¶ 4(a)(i). The Panel agrees that Complainant’s registrations with the USPTO and SAIC serve to demonstrate Complainant’s Policy ¶ 4(a)(i) rights in the WATTS mark. 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).”).
Complainant further argues the <usawatts.com> domain name is confusingly similar to the WATTS mark. Complainant urges that the name incorporates the WATTS mark in full alongside the geographically descriptive term “USA” and the irrelevant generic top-level domain (“gTLD”) “.com.” In comparable cases, prior panels have determined that the additions of a geographically descriptive term or abbreviation such as “USA” and a gTLD are insufficient alterations to dispel confusing similarity. See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel agrees that the <usawatts.com> domain name is confusingly similar to the WATTS mark pursuant to Policy ¶ 4(a)(i).
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 lacks rights and legitimate interests in the disputed domain name. Complainant asserts that it has not given Respondent permission to use the mark in a domain name. Further, Complainant alleges Respondent is not commonly known by the disputed domain name as demonstrated by the WHOIS information. The Panel notes that the WHOIS information lists “Whois Agent / Domain Whois Privacy Protection Service” as the registrant. The Panel agrees that there is no basis to find Respondent commonly known by the <usawatts.com> 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).
In addition, Complainant argues that Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the domain name. Complainant claims Respondent is using the disputed domain name to imitate Complainant by displaying Complainant’s blue “W” logo and Complainant WATTS mark while offering the same goods that Complainant provides. See Compl., at Attached Ex. C. The Panel compares Complainant’s own website (Exhibit F) with Respondent’s website (Exhibit C), and agrees that Respondent has attempted to pass itself off as Complainant. In Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007), the panel wrote, “Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Here, the Panel finds Respondent’s efforts to pass itself off as Complainant through a functioning imitation website amounts to neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant asserts that Respondent is using the disputed domain name to promote an imitation website at which Respondent offers goods in competition with Complainant, and argues that this constitutes a disruption of Complainant’s business. See Compl., at Attached Ex. C. As Respondent appears to be advertising water solution parts in competition with Complainant on the resolving page, the Panel agrees that Respondent has engaged in commercial disruption of Complainant, and therefore finds evidence of Respondent’s bad faith use and registration pursuant 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).
Next Complainant argues that Respondent’s efforts to imitate Complainant in hopes of generating increased traffic to Respondent’s website for commercial amounts to Policy ¶ 4(b)(iv) bad faith. The Panel recalls that Respondent’s website relies on Complainant’s blue “W” logo and Complainant WATTS mark while advertising the same type of goods that Complainant provides. See Compl., at Attached Exs. C, F. The Panel agrees that Respondent’s efforts to pass itself off as Complainant in hopes of financial benefit evinces bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Finally, Complainant claims that Respondent had Complainant and its WATTS mark in mind at the time the disputed domain name was registered. Complainant argues that such knowledge actual knowledge can be gleaned from Respondent’s imitation of Complainant’s website, the metadata associated with the disputed domain name (promoted terms relied on by search engines to link a user’s search term with relevant online content), and the fame of Complainant’s mark. See Compl., at Attached Ex. C. As Respondent has mimicked Complainant’s own website—relying on Complainant’s logo, mark, goods, and associated search terms—the Panel determines that Respondent had actual knowledge of Complainant at the time of registration and that Respondent’s registration despite such knowledge invokes Policy ¶ 4(a)(iii) bad faith. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding 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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usawatts.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 9, 2014
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