A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant has provided evidence that it owns the trademark PENTAIR.
All four disputed domain names wholly incorporate the Complainant’s PENTAIR mark.
The disputed domain name <mypentairbenfits.com> differs from the Complainant’s PENTAIR trademark by the addition of the word “my”, the term “benfits” which is a misspelling of the word “benefits”, and the gTLD suffix “.com”.
The disputed domain name <pentairbenefit.com> differs from the Complainant’s PENTAIR trademark by the addition of the word “benefit” and the generic Top-Level Domain (“gTLD”) suffix “.com”.
The disputed domain name <mypentairbenifits.com> differs from the Complainant’s PENTAIR trademark by the addition of the word “my”, the term “benifits” which is a misspelling of the word “benefits”, and the gTLD suffix “.com”.
The disputed domain name <mypentairbenefit.com> differs from the Complainant’s PENTAIR trademark by the addition of the words “my” and “benefit” and the gTLD suffix “.com”.
It is well-established where a complainant’s trademark is recognizable within a domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity (see WIPO Overview 3.0, section 1.8; Novartis AG v. Radu Luca, WIPO Case No. D2016-2582). Thus, the addition of the words “my”, “benefit” or misspellings of the word “benefits” do not avoid confusing similarity with the Complainant’s PENTAIR mark.
It is also established that the addition of a gTLD to a disputed domain name does not avoid confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; WIPO Overview 3.0, section 1.11). Thus, the addition of the gTLD “.com” is without significance and does not prevent a finding of confusing similarity in the present case.
In the particular circumstances of the present case, the Panel is of the view that the disputed domain names are identical or confusingly similar to the Complainant’s trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the disputed domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, paragraph 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns multiple trademarks incorporating the word PENTAIR before the disputed domain names were registered and that it has not licensed or otherwise permitted the Respondent to use the Complainant’s PENTAIR mark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
In addition, the registrant names “Super Privacy Service LTD c/o Dynadot”, “Cun Shuo Zhang” and “shi lei” bear no resemblance to the disputed domain names in any way (see Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875; WIPO Overview 3.0, section 2.3). Thus, there is no evidence that the Respondent is commonly known by the disputed domain names.
Furthermore, the Complainant has submitted evidence showing that the disputed domain names redirect to pages containing PPC links. Past panels have found that the use of a domain name to host a parking page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363; WIPO Overview 3.0, paragraph 2.9).
The disputed domain name <mypentairbenefit.com> resolves to a website comprising PPC links relating to water filters, which is the field of practice that the Complainant operates in. Therefore, the Panel finds that the use of the disputed domain name <mypentairbenefit.com> in the present case to host a parking page comprising PPC links does not represent a bona fide offering.
In the present case, the Respondent did not submit a response and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names which is sufficient to rebut the Complainant’s prima facie case.
The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain names and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The complainant must show that the respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence that the disputed domain names were created after the PENTAIR mark was registered. Therefore, the prior registration of the PENTAIR mark is suggestive of the Respondent's bad faith when he registered the disputed domain names (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
The Complainant has further submitted evidence that an Internet search of the terms “PENTAIR” and “BENEFITS” would lead to results relating to the Complainant. This is suggestive that the Respondent knew or should have known that its registration would be identical or confusingly similar to the Complainant’s PENTAIR mark (see WIPO Overview 3.0, paragraph 3.2.2).
Therefore, the Panel finds that the Respondent knew or should have known about the PENTAIR mark and finds it inconceivable that the Respondent could have acquired the disputed domain names without knowledge of the PENTAIR mark. (See Leite’s Culinaria, Inc. v. Gary Cieara, WIPO Case No. D2014-0041; WIPO Overview 3.0, paragraph 3.2.2)
Furthermore, the disputed domain name <mypentairbenfits.com> is presently inactive and resolves to a blank page. Where passive holding is found, non-use of a domain name would not prevent a finding of bad faith, and a panel will look at the totality of circumstances in each case (see WIPO Overview 3.0, section 3.3; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Examples of factors considered by previous UDRP panels include: “(i) the degree of distinctiveness or reputation of the complainant’s mark; (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and (iv) the implausibility of any good faith use to which the domain name may be put.” In this case, the Panel is of the view that the particular circumstances strongly suggest that the Respondent’s non-use of the disputed domain name <mypentairbenfits.com> is in bad faith. The Complainant’s trademark is distinctive which shows bad faith on the Respondent’s part as it specifically targeted the Complainant, the Respondent has failed to submit a response, the Respondent used a privacy service to hide its details, and it is implausible that there is any good faith use to which the disputed domain name may be put (see WIPO Overview 3.0, section 3.3; Cloudflare, Inc. v. Private Registrant, Digital Privacy Corporation / Richard Sheng, WIPO Case No. DAI2019-0001; Philip Morris Products S.A. v. Han Ming, Lin Cheng, WIPO Case No. D2018-1635).
Next, the disputed domain names <pentairbenefit.com>, <mypentairbenefit.com> and <mypentairbenifits.com> resolve to websites comprising PPC links relating to, inter alia, water filters and employee insurance. The links relating to water filters are related to the industry that the Complainant operates in while the links relating to employee insurance suggests a connection to benefits received by the employees of the Complainant. Taken together with the confusing similarity between the disputed domain names and the Complainant’s PENTAIR mark, this further indicates that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant has provided evidence of mail exchanger records (“MX records”) attached to the disputed domain names, indicating that the disputed domain names can be used for email correspondence. The Panel agrees with the Complainant’s assertion that e-mails sent from e-mail addresses containing the disputed domain names would likely confuse recipients into believing that it is a legitimate communication from the Complainant and thus constitutes evidence of bad faith use (see Facebook Inc. v. Jeremy Williams, 3 Man Group, WIPO Case No. D2019-1535).
Finally, The Respondent did not submit a Response in this proceeding. The Respondent also used a privacy shield to hide their identity and did not answer cease and desist letter to the merit of the case. These are all further indications of the Respondent’s bad faith, which were considered by the Panel.
Based on the evidence presented to the Panel, including the confusing similarity between the disputed domain names and the Complainant’s mark, the fact that the disputed domain names directed to pages containing PPC links related to the industry that the Complainant is in, the fact that no Response was submitted by the Respondent, and the fact that the Respondent used a privacy shield, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.
|