Watts Water Technologies Inc. v. American WATS valve Group c/o Richard and American Wats Valve Group Beijing c/o Bengrong Hong
Claim Number: FA1209001464841
Complainant is Watts Water Technologies Inc. (“Complainant”), Massachusetts, USA. Respondent is American WATS valve Group c/o Richard and American Wats Valve Group Beijing c/o Bengrong Hong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation of <xn--dfvp8zhzb149coda.com>], registered with XIN NET TECHNOLOGY CORPORATION.
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 September 27, 2012; the National Arbitration Forum received payment on October 9, 2012. The Complaint was submitted in both Chinese and English.
On October 7, 2012, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation of <xn--dfvp8zhzb149coda.com>] domain names are registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the names. XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION 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 October 12, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 1, 2012 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@watsvalve.com, postmaster@xn--dfvp8zhzb149coda.com. Also on October 12, 2012, the Chinese language 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 16, 2012, 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 issues 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Complainant, Watts Water Technologies, Inc., was founded in 1874 and is headquartered in North Andover, MA. Complainant is an international manufacturer of “Innovative Water Solutions” for plumbing, heating, and water quality markets. Complainant’s WATTS mark is well recognized and respected worldwide.
2. Complainant is the owner of the WATTS mark pursuant to Policy ¶ 4(a)(i). Complainant owns trademark registrations for the WATTS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 563,758 registered Sept. 9, 1952), Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA696954 registered Sept. 20, 2007), and with China’s State Administration for Industry and Commerce (“SAIC”) (e.g., Reg. No. 856788 registered July 21, 1996).
3. Respondent’s <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names are confusingly similar to Complainant’s WATTS mark.
4. The <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name is translated into English to mean “wattsvalve.com.”
5. The <watsvalve.com> domain name is a purposeful misspelling of Complainant’s WATTS mark.
6. Respondent is not commonly known by the disputed domain names.
7. Respondent is not making a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names. Respondent uses the <watsvalve.com> domain name to sell “copies” of Complainant’s products. Respondent uses the <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name to display the products of Complainant’s competitor.
8. Complainant has not given Respondent permission to use Complainant’s WATTS mark.
9. The earliest date Respondent registered the <watsvalve.com> domain name was September 26, 2008 which is after Complainant’s first use on August 21, 1995.
10. The earliest date Respondent registered the <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name was April 1, 2009, which is after Complainant’s first use.
11. Respondent registered and is using the disputed domain names in bad faith.
12. Respondent is engaged in a typosquatting behavior.
13. Respondent is attempting to trade on Complainant’s fame and is trying to hide its own identity.
14. Respondent is trying to deceive others into thinking it is a legitimate company.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
In this decision, Respondents collectively are referred to as Respondent.
Preliminary Issue: Internationalized Domain Name
One of the domain names in dispute, <瓦特斯阀门.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation <xn--dfvp8zhzb149coda.com>.
Panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name).
The Panel finds that, for the purpose of the present proceeding, the <瓦特斯阀门.com> domain name is equivalent to its PUNYCODE translation, <xn--dfvp8zhzb149coda.com>.
For the 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 asserts it has rights in the WATTS mark pursuant to Policy ¶ 4(a)(i). Complainant provides evidence of its trademark registrations for the WATTS mark with the USPTO (e.g., Reg. No. 563,758 registered Sept. 9, 1952), CIPO (Reg. No. TMA696954 registered Sept. 20, 2007), and SAIC (e.g., Reg. No. 856788 registered July 21, 1996). By considering this evidence, the Panel finds that Complainant has sufficiently established rights in the WATTS mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations. See Dollar Fin. Group, Inc. v. Bankshire Corp., FA 1013686 (Nat. Arb. Forum July 30, 2007) (finding that the complainant established rights in its mark by registering the mark with the USPTO and CIPO); see also Hershey Chocolate & Confectionery Corp. v. Yao Renfa, FA 1295942 (Nat. Arb. Forum Jan. 18, 2010) (determining that Complainant’s registration of its HERSHEY’S mark with the SAIC demonstrated rights in the mark for purposes of Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names are confusingly similar to Complainant’s WATTS mark under Policy ¶ 4(a)(i). Complainant states that the <watsvalve.com> domain name contains a purposeful misspelling of Complainant’s WATTS mark with the addition of the term “valve” and the generic top-level domain (“gTLD”) “.com.” Complainant further argues that the <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name is translated into English to “wattsvalve.com.” The Panel notes that the disputed domain name adds the word “valve” and the gTLD “.com” to Complainant’s WATTS mark. Previous panels have found that these variations are insufficient to differentiate a disputed domain name from a registered trademark. See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Based on Complainant’s contentions and previous UDRP panel decisions, the Panel concludes that the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names are confusingly similar to Complainant’s WATTS mark under 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 names 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 contends that Respondent has never been commonly known by the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names. Complainant points out that the WHOIS information suggests that Respondent is known as an entity other than the WATTS trademark associated with Complainant. The Panel notes that the registrant listed for the <watsvalve.com> domain name is “American WATS valve Group c/o Richard” while the registrant listed for the <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name is “American Wats Valve Group Beijing c/o Bengrong Hong.” Complainant further contends that Complainant has not licensed, authorized, or permitted Respondent to register domain names featuring Complainant’s mark. Based on this evidence, the Panel finds that Respondent is not commonly known by the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names pursuant to Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain names and is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names. Complainant asserts that Respondent features copies of Complainant’s products for sale through the <watsvalve.com> domain name. Complainant further claims that Respondent’s <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name resolves to a page featuring lists of products of Complainant’s competitors. The Panel notes that Complainant’s evidence shows that the <watsvalve.com> domain name resolves to a Chinese language website that supports Complainant’s assertions. Further, the Panel notes that Complainant’s evidence shows that the <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name resolves to a website entitled, “Hanover Valves & Controls,” which offers directly competing water “flow control” products. Previous panels have found that using a complainant’s mark to sell counterfeit or “copied” versions of a complainant’s products without complainant’s authorization is not a bona fide use of a domain name. Prior panels have also held that the use of a complainant’s mark within a domain name to sell directly competing goods is also not a bona fide offering of goods or services. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name). Therefore, the Panel finds that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names according to Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant has proven this element.
Complainant claims that Respondent’s use of the <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names is “diverting Complainant’s customers or potential customers seeking information about Complainant to the website which Respondent’s domain name[s] resolves...” Complainant notes that Respondent uses the disputed domain names to either sell “copies” of Complainant’s products, or directly competing products. Previous panels have found bad faith registration and use under Policy ¶ 4(b)(iii) when a respondent uses a disputed domain name to divert Internet users to a website that either sells counterfeit or “copies” of Complainant’s goods or displays competing goods for the purpose of disrupting a complainant’s business. See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). The Panel finds, based upon Complainant’s submitted evidence and arguments, that Respondent registered and is using the disputed domain names in order to disrupt Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent demonstrates bad faith registration and use of the disputed domain names because Respondent is commercially benefitting from using the disputed domain names. As noted above, Complainant contends that Respondent is using the <watsvalve.com> domain name to display and sell “copies” of Complainant’s products through its Chinese language website, while using the <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain name to display and sell directly competing water “flow control” products. Previous panels have found bad faith pursuant to Policy ¶ 4(b)(iv) when a respondent registers a confusingly similar domain name containing Complainant’s mark in order to attract consumers to a website offering counterfeit versions of Complainant’s goods and/or directly competing goods. See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services). Based on these allegations and previous UDRP decisions, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent’s <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names are typosquatted versions of Complainant’s WATTS mark. Previous panels have found that typosquatting is an indication of bad faith pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). However, the Panel notes that both domain names contain an additional term, “valve,” and as such the disputed domain names are not direct examples of “typosquatting,” which is typically only found where the disputed domain name contains a misspelling of a complainant’s mark. Therefore, the Panel declines to find bad faith in the present proceedings under Policy ¶ 4(a)(iii) based upon the concept of “typosquatting.”
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 <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation <xn--dfvp8zhzb149coda.com>] domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines 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."). Complainant argues that Respondent’s use of the misspelled version of Complainant’s WATTS mark in addition to the word “valve,” which directly relates to Complainant’s products, is a clear indication that Respondent was fully aware of Complainant’s business and brands when the disputed domain names were registered. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
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 <watsvalve.com> and <瓦特斯阀门.com> [PUNYCODE translation of <xn--dfvp8zhzb149coda.com>] domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: November 21, 2012
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