DECISION

 

Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si

Claim Number: FA1707001740269

PARTIES

Complainant is Watts Water Technologies Inc. (“Complainant”), represented by UDRP Coordinator of CSC Digital Brand Services AB, Sweden.  Respondent is wo ci fa men zhi zao (kun shan) you xian gong si (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <watts-ks.com>, registered with 35 Technology Co., Ltd.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 17, 2017; the Forum received payment on July 17, 2017.

 

On July 17, 2017, 35 Technology Co., Ltd. confirmed by e-mail to the Forum that the <watts-ks.com> domain name is registered with 35 Technology Co., Ltd. and that Respondent is the current registrant of the name.  35 Technology Co., Ltd. has verified that Respondent is bound by the 35 Technology Co., Ltd. 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 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 2017 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-ks.com.  Also on July 18, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On August 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

     Complainant made the following contentions.

Complainant uses the WATTS mark to promote its business. Complainant registered the WATTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 563,758, registered Sept. 9, 1952). See Compl., at Attached Ex. A. Respondent’s <watts-ks.com> domain name is confusingly similar to Complainant’s WATTS mark because it merely appends a hyphen, an abbreviated geographical term (“ks” for “Kunshan,” a city in the Southern China Jiangsu province where Respondent is located), and the generic top-level domain (“gTLD”) “.com”.

 

Respondent has no rights or legitimate interests in the <watts-ks.com> domain name. Respondent has not authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. B (WHOIS information). Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant. See Compl., at Attached Ex. C.

 

Respondent has registered and is using the <watts-ks.com> domain name in bad faith. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by offering counterfeit versions of Complainant’s products. Id. Respondent also attempts to attract Internet traffic and commercially benefit from the goodwill of the WATTS mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Due to the fame of Complainant’s mark, Respondent also had actual knowledge of Complainant’s rights in the WATTS mark at the time of registration.

 

.B. Respondent

     Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

1. Complainant is a United States company which is an innovative manufacturer of innovative water solutions for plumbing and heating and water quality markets.

 

2. Complainant registered the WATTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 563,758, registered Sept. 9, 1952).

 

3. Respondent registered the <watts-ks.com> domain name on February 21, 2017.

 

4. Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant.

 

Preliminary Issue: Supported Language Request

 

The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a).  Complainant makes this request in light of the CHINESE language Registration Agreement.  It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.  Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the CHINESE language included in the Registration Agreement.  See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language).  Further, the Panel may weigh the relative time and expense in enforcing the CHINESE language agreement, which would result in prejudice toward either party.  See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). 

 

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

DISCUSSION

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(f), 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 (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..”)

 

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it registered its WATTS mark with the USPTO (e.g., Reg. No. 563,758, registered Sept. 9, 1952), and has rights in the mark under Policy ¶ 4(a)(i). A registration with a trademark authority, such as the USPTO, confers rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel may find that Complainant has rights in the WATTS mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s WATTS mark. Complainant argues that Respondent’s <watts-ks.com> domain name is confusingly similar to Complainant’s WATTS mark because it merely appends a hyphen, an abbreviated geographical term, and the gTLD “.com”. Complainant contends that the “ks” following the hyphen in the domain name is an abbreviation for the Chinese city of Kunshan. See Compl., p. 6. The addition of a hyphen, geographical term and a gTLD are not sufficiently distinguishing to negate the confusing similarity between a mark and a domain name. See Health Devices Corp. v. Aspen S T C, FA 158254 (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).”); see also InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Forum Nov. 10, 2003) (“Internet users may believe that the website located at the <dogpileuk.com> domain name is run by a United Kingdom branch or affiliate of Complainant. . . . Consequently, the Panel finds that the geographic identifier “uk” does not significantly distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(ii).”); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). As such, the Panel finds that Respondent’s <watts-ks.com> domain name is confusingly similar to Complainant’s WATTS mark.

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

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 (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 (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

trademark and to use it in its domain name adding the abbreviated geographical term, “ks”, which is an abbreviation for the Chinese city of Kunshan, where Respondent is located;

(b)  Respondent registered the <watts-ks.com> domain name on February 21, 2017;

(c)   Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant;

(d)  Respondent has engaged in these activities without the consent

or approval of Complainant;

(e)  Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its WATTS mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <watts-ks.com> WHOIS information lists “WO CI FA MEN ZHI ZAO (KUN SHAN) YOU XIAN GONG SI” as the registrant. Therefore the Panel holds that the Respondent is not commonly known by the <watts-ks.com> domain name;

(f)   Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because Respondent is using the resolving webpage to pass itself off as Complainant. The <watts-ks.com> domain name resolves to a website that implements a color scheme identical to Complainant’s and displays counterfeit versions of Complainant’s products. See Compl., at Attached Ex. C (screenshot of <watts-ks.com> resolving website). Use of a domain name to pass off as a complainant or to sell counterfeit versions of a complainant’s products is not a bona fide offering of goods or services or legitimate noncommercial or fair use of a domain name. See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Dream Horse Classifieds v. Mosley, FA 381256 (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)). Therefore, the Panel finds that this evidence supports a finding that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (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.

 

Registration and Use in Bad Faith

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 submits that Respondent is disrupting its business by attempting to divert potential customers away from Complainant by using the disputed domain name’s resolving website to sell counterfeit versions of Complainant’s products. Disruption of a complainant’s business is considered bad faith use pursuant to Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Janis Vecvanags, FA1503001608165 (Forum Apr. 6, 2015) (holding that the respondent’s use of the disputed domain name to sell counterfeit HARLEY-DAVIDSON products disrupted the complainant’s business and indicated bad faith under Policy ¶ 4(b)(iii)). Complainant has provided screenshot evidence of Respondent’s resolving webpage which purportedly displays the counterfeit versions of Complainant’s products for sale. See Compl., at Attached Ex. C. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).

 

Secondly, Respondent has registered and is using the <watts-ks.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the WATTS mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (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.”). Here, Complainant has provided screenshot evidence of the <watts-ks.com> domain name which displays Complainant’s marks and counterfeit versions of Complainant’s products. Therefore, the Panel concludes that the <watts-ks.com> domain name was registered and used in bad faith under Policy ¶ 4(b)(iv).

 

Thirdly, Complainant also contends that in light of the fame and notoriety of Complainant’s WATTS mark, it is inconceivable that Respondent could have registered the <watts-ks.com> domain name without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because prior UDRP decisions have declined to find bad faith as a result of constructive knowledge. 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."). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent may have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s WATTS mark has created significant good will and consumer recognition around the world and has been in use by Complainant since 1952. See Compl., at Attached Ex. A. Respondent’s display of Complainant’s products on the resolving website is further evidence of Respondent’s knowledge. Compare Compl., at Attached Ex. C (Respondent’s website), with Compl., at Attached Exs. E, G (Complainant’s offerings). Therefore, due to the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <watts-ks.com> domain name was registered and subsequently used.

 

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <watts-ks.com>  domain name using the WATTS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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.

 

DECISION

 

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-ks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  August 11, 2017

 

 

 

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