WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos A/S v. Manila Industries, Inc.
Case No. D2006-1130
1. The Parties
The Complainant is Grundfos A/S, Bjerringbro, Denmark, represented by Delacour Law Firm, Denmark.
The Respondent is Manila Industries, Inc., California, United States of America, represented by Shrull Altman LLP, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <grundfost.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 1, 2006. On September 5, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On September 22, 2006, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 September 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2006. The Response was filed with the Center on October 16, 2006.
The Center appointed Fleur Hinton as the sole panelist in this matter November 2, 2006. 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.
The Complainant submitted a supplementary complaint to the Center on October 25 2006. The Respondent lodged an objection to the supplementary complaint on November 8, 2006, submitting argument to the effect that the Panel should not consider the supplementary complaint.
On having read and considered both the supplementary complaint and the objection thereto, the Panel has decided that it is in the interest of the parties and of the process generally that the supplemental complaint be considered.
4. Factual Background
The Complainant is a part of a Swiss group of companies and its ultimate owner is the Danish Poul Due Jensen Foundation. The Grundfos Group is one of the largest manufacturers of circular pumps in the world and produces more than 10 million of them annually. Its trademark, originally GRUNDFOSS and now GRUNDFOS has been registered in respect of pumps since as early as 1946. The Complainant has registered its trademark worldwide.
The Respondent registered the domain name <grundfost.com> through the registrar Compana LLC on December 13, 2005. It has not pointed to any registrations of trademarks for GRUNDFOST that it may own, so the Panel does not take any such possibility into account.
5. Parties’ Contentions
The Complainant submits that the domain name <grundfost.com> is either substantially identical with or deceptively similar to its trademark GRUNDFOS.
The Complainant submits that there are no legitimate grounds or interests owned by the Respondent in the domain name <grundfost.com>. Further, it claims that the Respondent’s only business is as a cybersquatter and that it does not conduct a legitimate business at its website.
The Complainant alleges further that, because of the very substantial evidence of use by the Complainant of its trademark GRUNDFOS, it has notoriety as a famous trademark and that, therefore, no one could simply adopt a domain name incorporating a word so close to GRUNDFOS without such adoption having been in bad faith.
The Respondent claims that the adoption of a domain name with only one letter’s difference, as in the present case, has not been considered as identical or confusingly similar where the result is an entirely new word. The Respondent compares its domain name ‘Grundfost’ with ‘Grundfos’. It enlightens the Panel with the information that ‘Grundfost’ is (presumably in transliterated form) a centuries old Russian surname, whereas the Complainant’s ‘Grundfos’ is a coined expression of comparative novelty which should not be used to prevent an earlier surname from use as a domain name. For this authority the Respondent relies upon the Panel decision in A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, WIPO Case No. D2003-0260. In that case the Panel found that the distinction of “ch” being replaced by “z” to make <aberzombie.com> as opposed to <abercrombie.com> made a substantial and recognizable difference between the two domain names.
The Respondent claims that the Complainant has not made out a case that its use lacks legitimate rights or interest because it is using a surname and provides a portal leading to a variety of different products and services. Because this surname has no secondary meaning, the Respondent claims that it is entitled to adopt it for its own purposes.
The Respondent claims that the Complainant has failed to show bad faith on its behalf because it has registered a domain name as a surname to provide a locator for services. Under these circumstances, the Respondent claims, the Complainant has a heavy onus to establish bad faith.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the domain name <grundfost.com> is confusingly similar to the Complainant’s trademark GRUNDFOS. The fact that Grundfost (or a transliteration thereof) may be a Russian surname does not change that because it is not, in the Panel’s view, a matter of which a large percentage of internet users would be aware.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent does not have any right or legitimate interest in the domain name <grundfost.com>. It has only been using the name since late 2005 whereas the Complainant has been using its trademark GRUNDFOS (or a substantially identical mark) since 1946. In view of the Complainant’s very substantial reputation, there is an onus on the Respondent to provide a clear basis for its choice of a domain name that is so similar to that of the Complainant. The Respondent has not provided such evidence.
The Panel finds that this case is not comparable to that referred to by the Respondent, A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, WIPO Case No. D2003-0260. That is because, to the average English speaker, ‘“abercrombie” and “aberzombie” are readily distinguishable by just one letter. Because of the well known meaning of the word “zombie” “aberzombie” would not be confused with the trademark ABERCROMBIE. Whilst this may show a bias towards the English language and speakers of it, the parties to this matter have chosen to have their disputes dealt with in English. Although the trademark GRUNDFOS is a famous trademark, the Panel finds that the ordinary user of the disputed domain name will not readily distinguish between GRUNDFOS and GRUNDFOST.
The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As discussed above, the disputed domain name is confusingly similar to the Complainant’s famous trademark. As of September 22, 2006, the website to which the disputed domain name resolved contained links for the purchase of a variety of goods and services. The Panel finds that the Respondent registered and used the disputed domain name in bad faith, namely in order attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the website.
The Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <grundfost.com> be transferred to the Complainant.
Dated: November 23, 2006