Pentair Water Pool and Spa, Inc. v. PLUTO DOMAIN SERVICES PRIVATE LIMITED.
Claim Number: FA0901001243395
Complainant is Pentair
Water Pool and Spa, Inc. (“Complainant”), represented by Scott R. Austin of Roetzel & Andress,
LPA, Ohio, USA. Respondent is PLUTO DOMAIN SERVICES PRIVATE LIMITED (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <intellichlor.com>, registered with Lead Networks Domains Pvt. Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 16, 2009; the National Arbitration Forum received a hard copy of the Complaint January 20, 2009.
On January 21, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <intellichlor.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 28, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of February 17, 2009,
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@intellichlor.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 25, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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." 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 makes the following assertions:
1. The domain name that Respondent registered, <intellichlor.com>, is identical to Complainant’s INTELLICHLOR mark.
2. Respondent has no rights to or legitimate interests in the <intellichlor.com> domain name.
3. Respondent registered and used the <intellichlor.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures, markets, and sells products for the pool and spa industry under the INTELLICHLOR mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on October 31, 2006 (Reg. No. 3,166,294, filed on December 15, 2004). Complainant has used the INTELLICHLOR mark continuously in commerce to market its products since at least as early as 2005.
Respondent registered the <intellichlor.com> domain name August 3, 2006. The disputed domain name resolves to a website that contains links to third-party websites, some of which compete with Complainant for business.
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."
Given 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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
While Complainant’s trademark was registered with the USPTO
after Respondent registered the disputed domain name, the relevant date for
establishing rights in a registered mark is the filing date. See Hershey
Complainant contends that Respondent’s <intellichlor.com> domain name is identical to its INTELLICHLOR mark. The <intellichlor.com> domain name differs from Complainant’s mark only in that the generic top-level domain (“gTLD”) “.com” has been added to the mark. The Panel finds that despite the addition of a gTLD, a disputed domain name may still be identical to a mark, because every domain name must contain a top-level domain. Therefore, the Panel finds that the addition of “.com” to Complainant’s mark has not sufficiently distinguished it from Respondent’s disputed domain name pursuant to Policy ¶ 4(a)(i). See Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <intellichlor.com> domain name. Under Policy ¶ 4(a)(ii), after a complainant makes a prima facie case against a respondent, a respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made such a prima facie case under Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <intellichlor.com> domain name nor has it ever been the
owner or licensee of the INTELLICHLOR mark.
The WHOIS record for the disputed domain name lists Respondent as “PLUTO
DOMAIN SERVICES PRIVATE LIMITED.”
Because of the discrepancy between Respondent’s listed business name and
the disputed domain name, along with the fact that Respondent failed to show
any evidence contrary to Complainant’s contentions, the Panel finds that
Respondent is not commonly known as <intellichlor.com> pursuant to
Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp.,
FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not
commonly known by <aolcamera.com> or <aolcameras.com> because the
respondent was doing business as “Sunset Camera” and “World Photo Video &
Imaging Corp.”); see
also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec.
22, 2003) (“Respondent has registered the domain name under the name
‘Ilyoup Paik a/k/a David Sanders.’ Given
the WHOIS domain name registration information, Respondent is not commonly
known by the [<awvacations.com>] domain name.”).
Respondent maintains a website at the <intellichlor.com> domain name that advertises competitors of Complainant and provides hyperlinks to third-party websites, many of which belong to competitors of Complainant. The Panel finds that this use of the <intellichlor.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed domain name to divert Internet customers from Complainant’s website to Respondent’s website at the <intellichlor.com> domain name through the confusion caused by the identical nature of the INTELLICHLOR mark and the <intellichlor.com> domain name. Respondent may also, according to Complainant’s contentions, have intended to disrupt Complainant’s business by diverting confused customers to Complainant’s competitors. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, and is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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 pursuant to Policy ¶ 4(c)(iii)).
Complainant also contends that Respondent is gaining
commercially through this diversion, both through click-through fees and
through the competing services that Respondent is advertising. The Panel finds that this is an intentional
use of the disputed domain name for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in
bad faith. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intellichlor.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 11, 2009.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum