WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. King Pumps Inc

Case No. D2005-1073

 

1. The Parties

The Complainant is Grundfos A/S, Bjerringbro, Denmark, represented by Delacour Law Firm, Denmark.

The Respondent is King Pumps Inc, Florida, United States of America, represented by an internal representative.

 

2. The Domain Name and Registrar

The disputed domain name <grundfospumpsupply.com> is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2005. On October 12, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On October 12, 2005, Go Daddy Software transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 19, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 27, 2005. In accordance with the Rules, paragraph 5(a), the extended due date for the Response was November 23, 2005. The Response was filed with the Center on November 17, 2005.

The Center appointed Luca Barbero as the Sole Panelist in this matter on November 30, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 6, 2005, the Center received a request from the Complainant to submit a supplemental filing stating that “the Respondent claims to be an authorized distributor of GRUNDFOS pumps and to have (unlimited) right to use the GRUNDFOS trademark. This supposition is clearly contested by the Complainant, and as this issue must be considered relevant for the Panel’s evaluation of the case, the Complainant’s request clearly seems well-founded”.

On December 6, 2005, the Center received an email from the Respondent indicating that “we object to any attempt to delay resolution of Case No. D2005-1073. Mr. Peterson’s suppositions were already addressed in our response or are completely erroneous. King Pumps is and has been a Grundfos Distributor in Miami, Florida for the last 20 years (a letter from the Grundfos representative was included in our response). King Pumps has been selling Grundfos Pumps Online since 1999. See “http://store.waterpumpsupply.com/grundfos1.html”. No where in our response do we claim to have (unlimited) right to use the GRUNDFOS trademark as Mr. Peterson erroneously states”.

On December 15, 2005, the Panel issued Procedural Order No.1 stating that: “… both parties have not sufficiently substantiated with documentary evidence the statements regarding the nature and possible limits of their business relationship. The Panel may request, in its sole discretion, further statements or documents from either of the Parties pursuant to Paragraph 12 of the Rules. In view of the above, the Panel hereby orders the following:

(a) The Complainant and the Respondent are granted a time of seven days to submit to the Center supporting documentary evidence of their assertions quoted above, providing the Panel with e.g. extract of the terms of the contract signed between the parties herein, correspondence exchange by the parties, invoices, transport documents and any other supporting documentation.

(b) Any additional statement submitted by the Parties that shall solely refer to the documentary evidence submitted pursuant to the present procedural order…”

 

4. Factual Background

The Complainant is part of the Grundfos Group established in 1945 and is one of the largest producer of circular pumps, producing more than 10 million pumps per year.

The Complainant is the owner of several trademarks registration consisting of the sign GRUNDFOS worldwide including the trademark registration No. 782042 of December 22, 1964 in the United States.

The Respondent has been a multi-line pump distributor for 31 years.

The Respondent registered the Domain Name, <grundfospumpsupply.com>, on July 12, 2005.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name “must be considered confusingly similar with the Complainant’s well known trademark” since the words “pump” and “supply” are generic terms making express reference to goods sold by the Complainant, therefore increasing the impression of a connection with the Complainant.

With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent is actively using the domain name for a website with sponsored links to various other websites typically promoting pumps, therefore using the Domain Name for commercial gain by attracting customers by way of creating a likelihood of confusion with the Complainant’s trademark.

The Complainant indicates that such use constitutes “prima facie evidence of the absence of a right or legitimate interest by the Respondent, shifting the burden of proof to the Respondent”.

The Complainant also declares that “as Respondent has not submitted an answer to the Complainant’s cease and desist letter, it must be considered evident that the respondent has no right or legitimate interest in the domain name”.

With reference to the circumstances evidencing bad faith the Complainant indicates that the Respondent has registered a domain name identical with the Complainant’s well-known trademark and is using the Domain Name for commercial gain in light of the sponsored links to websites promoting products similar to the Complainant’s products.

The Complainant also emphasizes that the Respondent, “as a supplier of pumps system, must clearly be considered to be well familiar with the Complainant and the Complainant’s trademark rights…”.

In the first supplemental filing to the Complaint, the Complainant reiterated the reasoning about the lack of legitimate interest based on the use of the Domain Name with the web page of links and noted that the Respondent has confirmed the bad faith registration in light of the fact that the Respondent has claimed to have sold the Complainant’s pumps for 20 years.

The Complainant also provided the Panel with a letter signed by the Managing Director and the Group General Counsel indicating that the Blumenauer Corporation Inc. (the company which has sold the Complainant’s pumps to the Respondent) “has not been authorized … to use … nor … to sublicence the trademark GRUNDFOS to third parties” and therefore the certification letter provided to the Respondent is “an unlawful misrepresentation and a violation of Grundfos’s Trademark rights”.

In the second supplemental filing to the Complaint submitted to the Center pursuant to Procedural Order No. 1, the Complainant states that “the core of the matter is that whatever rights the Blumenauer Corp. might - or might not - have with regard to use of the Complainant’s well-known trademark GRUNDFOS, the Blumenauer Corp. is under no circumstances authorised to assign or transfer any rights vis-à-vis the trademark GRUNDFOS. The Respondent has thus shown absolutely no evidence whatsoever of the Blumenauer Corp’s possible authorisation to assign or transfer any rights vis-à-vis the trademark GRUNDFOS, and it must according to the submitted documentation by the parties clearly be concluded by the Panel that the Respondent is not an authorised distributor of GRUNDFOS products”.

As documentary evidence to be provided to the Panel pursuant to Procedural Order No. 1, the Complainant submits a standard licence agreement of the Complainant (not signed by any of the parties herein) and highlights the clause under “Licensee’s obligations” stating “The Licensee is not allowed to assign or transfer any of its rights or obligations under this Agreement…”

The Complainant concludes that “… this means that even if the Blumenauer Corp. did have rights with regard to use of the Complainant’s well-known trademark GRUNDFOS, transfer of such rights to the Respondent is under no circumstances allowed, and the Respondent can thus not legally claim to have any rights or legitimate interests with respect to the Domain Name nor to have registered and used the Domain Name in good faith due to the business relationship with the Blumenauer Corp”.

B. Respondent

The Respondent, a multi-line pump distributor for 31 years, contends that in 1999 it published its website at “www.kingpumps.com” with a link to its on-line consumer store at “www.waterpumpsupply.com”.

The Respondent informs the Panel that due to the success of its Internet sales, the management decided to publish targeted sites selling only the products of specific pump manufacturers. To that end, Grundfos was one of the lines selected to have their own website, specifying that only Grundfos products would be sold.

The Respondent indicates that it selected a domain name that would describe the site’s purpose which was the supply of Grundfos Pumps and therefore included the keywords “grundfos”, “pump” and “supply”.

With reference to rights or legitimate interests in respect of the Domain Name, the Respondent states that it has been an authorized factory distributor for the Complainant for the last 20 years and has a legitimate interest and right in promoting to the best of its ability the sale of the products that it distributes.

The Respondent encloses with the Response, the original of a letter signed by the President of the Blumenauer Corporation Inc stating that the Respondent “… is currently and has been a factory authorized distributor for Grundfos Pumps for the last 20 years”. Addressing the Complainant’s objections to this letter, the Respondent provided - within the documents submitted pursuant to Procedural Order No.1 - printouts of pages of the Complainant’s official website listing Blumenauer Corporation Inc amongst the authorized distributors in various cities in Florida, all linked to a page (still online at the time of drafting of the present decision at “http://www.us.grundfos.com/Web/World.nsf/Pages/27EF84D8CFDD55F0882570EE0010916A?OpenDocument”) where such company is described by the Complainant as a “Proud Business Partner”.

The Respondent also encloses pursuant to Procedural Order No.1. a collection of packing slips (printed on letter headed paper of the Grundfos Manufacturing and Service location based in Fresno, California) with the address of the Respondent, invoices and purchase orders of the Respondent related to the Complainant’s products in the last two years. Furthermore, a Certified Public Accountant has attested that the Respondent - during the period from January 2004 and December 20, 2005 – bought a considerable amount of products from Blumenauer Corp, consisting of a number of pumps and related fittings, controls, motors, and other parts.

In view of the Respondent, “… the documentary evidence shows that the Respondent, whether called a distributor, dealer, wholesaler, re-seller, provider, seller, supplier, etc. indeed sells the Complainant’s products purchased through one of its manufacturer representatives/ master distributor, and that the Respondent is an active part of the Grundfos distribution channel in the USA.”

With reference to the website published on the Domain Name, the Respondent emphasizes that Go Daddy automatically “parked” the Domain Name on a page designed and published exclusively by them, which includes the random links quoted by the Complainant. The Respondent provides the Panel with an email correspondence exchange with the registrar on November 15, 2005, confirming that “… this is a parked page that Go Daddy provides for free when a domain name is purchased but no site is linked to it” and providing the Respondent with instructions how to change it.

In the document submitted pursuant to Procedural Order No.1, the Respondent also enclosed the answer received from the same Registrar on December 16, 2005, at the Respondent’s following request to activate the forwarding to the website “http://store.waterpumpsupply.com/grundfos1.html” indicating that in light of the pending administrative procedure “… registrars are required to lock a name when they receive notice of a pending legal dispute. Therefore the name cannot be transferred or otherwise modified … when we receive the Decision for the arbitration dispute we will update the name accordingly”.

The Respondent contends that the Domain Name was registered to allow a 20 year distributor of the Complainant’s pumps to feature and focus its sales efforts of Grundfos Products.

The Respondent states that it has no intention of selling, renting or otherwise transferring the Domain Name to anyone. It will be used to solely promote the sale of Grundfos pumps and the keywords “grundfos”, “pump” and “supply” were included in the Domain Name to reflect the nature of the site that is the supply of Grundfos products exclusively.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of a number of trademark registrations consisting of GRUNDFOS such as the registration No. 782042 of December 22, 1964 in the United States.

The Panel finds that the Domain Name is confusingly similar to the trademarks owned by the Complainant. The addition of descriptive terms - such as “pump” and “supply” - to a trademark is not a distinguishing feature.

See along these lines Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312; Siemens Aktiengesellschaft v. Telmex Management Services Inc., WIPO Case No. D2003-0995; A. Nattermann & Cie Gmbh, Aventis Pharma SA v. Derrick Horner, WIPO Case No. D2003-0844; Sparco Srl v. Mr. Alexander Albert W. Gore/Ukrainian Cat. University, WIPO Case No. D2003-0448; Ticketmaster Corporation v. Dotsan, WIPO Case No. D2002-0167; Toyota France and Toyota Motor Corporation v. Computer Brain, WIPO Case No. D2002-0002; Koninklijke Philips Electronics N.V. v. NicNax, WIPO Case No. D2001-1245; DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Playboy Enterprises International Inc. v. SAND WebNames – For Sale, WIPO Case No. D2001-0094; Microsoft Corporation v. J. Holiday Co., WIPO Case No. 2000-1493; Heineken Brouwerijen B.V. v. Mark Lott, WIPO Case No. D2000-1487; Ermenegildo Zegna Corporation, Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. v. Steven Shiekman, WIPO Case No. D2000-1375; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.

In view of the above, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or

(iii) that it intends to make a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

With reference to the Complainant’s statement, maintained also in the Amended Complaint “… as the Respondent has not submitted an answer to the Complainant’s cease and desist letter, it must be considered evident that the Respondent has no right or legitimate interest in the domain name”, the Panel notes that the copy of the letter enclosed in the Complaint - without any proof of delivery - was only addressed to Domains by Proxy, Inc. based in Arizona.

Furthermore, the Panel was not provided with evidence of any request submitted to the Registrar or investigation conducted by the Complainant to ascertain the actual identity of the registrant behind the veil adopted by the Respondent to register the Domain Name which was pierced by the request for registrar verification of the Center.

Therefore, the absence of a reply to the cease and desist letter cannot in this case be considered by the Panel as an element evidencing the absence of rights or legitimate interest in the Domain Name.

This case raises the complex issue as to the extent to which a reseller of legitimate goods or services can reflect that fact by using the manufacturer’s name as part of a domain name.

According to the majority view of the Overview of WIPO Panel Views on Selected UDRP Questions (“http://www.wipo.int/amc/en/domains/search/overview/”, hereinafter the “Overview”), a reseller can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The Respondent must also not try to corner the market in domain names that reflect the trademark.

As indicated in the first relevant decision quoted in the Overview, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the issue before the Panel is whether the Respondent’s offerings may be characterized as “bona fide pursuant to paragraph 4(c)(i) of the Policy and to be bona fide” the offering must meet several requirements including, at the minimum, the following.

- The Respondent must actually be offering the goods or services at issue. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (where the respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).

The Respondent herein has provided to the Panel documentary evidence of the actual sale of the Complainant’s products dating more than one year prior to the dispute.

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website).

The Respondent has already published a disclaimer to that effect in the pages dedicated to the sale of the Complainant’s products currently online at the general website. No evidence has been produced to the Panel that the disclaimer was posted after receipt of the Complainant’s objection only or that the Respondent has improperly communicated with Internet users in any other way. As it was found in another relevant case quoted in the Overview with reference to cases dealing with the present issue within a non-contractual relationship, Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, “the Panel expects the Respondent to maintain the disclaimer posted in the websites, at least as it currently is” or, following the example of the respondent in the quoted case, place the disclaimer even more prominently.

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).

The Panel finds that the Respondent’s conduct in registering a domain name containing two descriptive terms in association with the Complainant’s trademark offered for sale is not to be considered as an attempt to corner the market, in absence of any evidence of a pattern of such conduct in registering confusingly similar domain names or of the registration by the Respondent of one or more domain names identical to the trademark.

- The Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use).

The Respondent has declared that the Domain Name will be linked the website “http://store.waterpumpsupply.com/grundfos1.html”, at the same time declaring that “it will be used to solely promote the sale of Grundfos pumps”. As highlighted in the correspondence annexed to the Response such a website is not already linked to the Domain Name partly due to the present administrative procedure which did not allow the Registrar to activate the forwarding requested by the Respondent and delete the page prepared and published by the Registrar with the various links, but it was already online at the time of the decision as a sub page of the Respondent’s website. The Panel has no reason to believe that the Respondent will not sell the Complainant’s products from the website corresponding to the Domain Name in the future. However, judging from the website adopted by the Respondent for the Domain Name, the Respondent does not refrain from linking to websites selling products directly or indirectly competing with the Complainant’s products. The Panel finds that the Respondent has not decided to sell only the Complainant’s products.

Accordingly, the Panel finds that the Respondent has not established a legitimate interest (under the Policy) in using the Domain Name.

Registered and Used in Bad Faith

The Complainant must show that the Respondent has registered and used the Domain Name in bad faith. The following circumstances, in particular but without limitation, are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

Considering the Respondent’s business and proposed use of the Domain Name, it is clear that the Respondent was aware of the Complainant’s GRUNDFOS trademark at the time it registered the Domain Name.

The use of the Domain Name to sell products belonging both to the Complainant and to competitors of the Complainant constitutes an attempt on the part of the Respondent to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s GRUNDFOS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, a situation envisaged by paragraph 4(b)(iv) of the Policy.

The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith.

 

7. Decision

In light of the foregoing, the Panel decides that the Domain Name registered by the Respondent is confusingly similar to the Complainant’s trademarks, that the Respondent has no rights to or legitimate interest in the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.

The Panel therefore orders, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, that the Domain Name, <grundfospumpsupply.com>, be transferred to the Complainant.


Luca Barbero
Sole Panelist

Dated: January 7, 2006