The Complainant is Grundfos A/S of Bjerringbro of Denmark, represented by Bech-Bruun Law Firm of Denmark.
The Respondent is Telecom Tech Corp. of Panama City, Panama and Private Registration of Grand Cayman, Cayman Islands, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.
The disputed domain name <grunfospumps.com> is registered with Bargin Register Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 7, 2010, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. On May 13, 2010 Bargin Register Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 18, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 18, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 9, 2010.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on June 17, 2010. 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 is part of the Grundfos Group established in 1945 by the late Poul Due Jensen. The Grundfos Group is today ultimately owned by Poul Due Jensen's Foundation. The management of the group is domiciled in Bjerrinbro, Denmark.
The Grundfos Group is a large manufacturer of high technology pumps and pump systems, with roughly 17,900 employees worldwide by the end of 2008 and the net turnover in 2008 exceeded DK 19.0 billions.
The Complainant trades under the company name and trademark GRUNDFOS in several countries including in Panama. The Complainant submitted with the Complaint copies of its trademark registrations in several classes for the GRUNDFOS brand in the following jurisdictions:
- Denmark - Registration No. VR 1968 02852, 19681025 – applied for on June 12, 1967;
- the European Union - OHIM Registration No. 006654339 – applied for on February 8, 2008; and
- Panama (country of origin of the Respondent) – Registration No. 87545, issued on May 15, 1997.
The Complainant also owns, among others, the domains <grundfos.com> and <grundfospumps.com>.
In an article published in the “Fortune” Magazine in January 2003, the Complainant was listed as one of the 10 great companies to work for in Europe.
The disputed domain name <grunfospumps.com> was registered with the Bargin Register Inc. on July 18, 2007. Said domain name resolves to a web page that displays sponsored links, featuring various services and products, including pumps.
On February 23, 2010, the Complainant sent a cease-and-desist letter, requesting that the Respondent voluntarily transfer the disputed domain name to the Complainant. The Complainant never received a response to this letter.
The Complainant argues that the disputed domain name <grunfospumps.com> is confusingly similar to the Complainant's trademark GRUNDFOS, particularly because the dominant and characteristic part of the domain name is “grunfos”. In this regard, the Complainant states that it is irrelevant the fact that the disputed domain name does not contain the letter “d” in “grunfos”, since it does not change the phonetic expression.
Furthermore, according to the Complainant, the generic term “pumps” included in the disputed domain name is insufficient to avoid a likelihood of confusion with the trademark GRUNDFOS. In fact, the term “pumps” refers to the main business area of the Complainant.
The Complainant also states that its brand GRUNDFOS is a well-known trademark. In this regard, the Complainant cites a decision of the UDRP panel, namely, Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618, by means of which it was concluded that the referred brand GRUNDFOS should be, de facto, acknowledged as a well-known trademark.
In addition, the Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain name, since the Respondent is not a licensee of the Complainant, nor is authorized to use Complainant's trademark. In effect, there is no business relationship between both parties. Moreover, the Respondent has not replied to the Complainant's cease-and-desist letter, which shows that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
Finally, the Complainant alleges that its trademark GRUNDFOS is being used in bad faith by the Respondent, who appears to be familiar with the Complainant, since the Respondent is also marketing pumps and displaying sponsored links to inter alia manufactures of pumps on the disputed domain name <grunfospumps.com>. By using the Complainant's trademark, the Respondent redirects Internet users to his own website.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy the Complainant must prove each of the following:
(i) That the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) That the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is used in bad faith.
The Complainant has a property right over the trademark GRUNDFOS, ensuring its protection by registering the referred brand in several countries.
The disputed domain name <grunfospumps.com> is not identical to the trademark GRUNDFOS, owned by the Complainant. Nevertheless, the Panel is of the opinion that the disputed domain is confusingly similar with the Complainant's trademark, since within the disputed domain name, there is no doubt that the predominant element is “grunfos”, an expression which differs from the trademark GRUNDFOS only by the omission of the sole “d”.
The simple exclusion of the referred letter is not sufficient to avoid confusion between the disputed domain name and the Complainant's trademark. It does not bring sufficient distinctiveness to the domain name. In effect, said omission keeps the mark with the same general sound, remaining confusingly similar to the registered mark GRUNDFOS.
Furthermore, the adjoin of the term “pumps”, which is a generic word related to the Complainant´s field of activity, is secondary and does not remove the distinctiveness of the mark “GRUNDFOS” which continues to constitute the most predominant element within the disputed domain name. Indeed, one may reasonably suspect that the public, when reading the disputed domain name will be lead to believe that same is owned by, or related to the Complainant. The Panel cites, in that aspect, Societe Des Eaux De Volvic v. Volvic Minarel Water, WIPO Case No. D2008-1084; L'OREAL v. Lewis Cheng, WIPO Case No. D2008-0437 and The American Automobile Association Inc. v. Private, Who is For cbelprip1702, Private Who is For yelprip1706, WIPO Case No. D2010-0212.
In this sense, the Panel finds that the domain name <grunfospumps.com> meets the Policy requirement and that it is confusingly similar to Complainant's trademark GRUNDFOS , within the meaning of the paragraph 4(a)(i) of the Policy.
The Respondent failed to reply to the Complaint and did not submit any evidence supporting a legitimate right or interest in the disputed domain name nor replied to the Complainant's cease-and-desist letter. In this sense, once the Complainant presents a prima facie evidence that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent as already seen in Belupo d.d. Wachem d.o.o., WIPO Case No. D2004-0110; Alize-SFL v. Ali Inc., Ali B Abook, WIPO Case No. D2008-1923 and Conforama Holding v. Ying Liu, WIPO Case No. D2010-0094.
With basis on the Complainant's statements, the Panel notes that the Respondent is neither affiliated to the Complainant, nor a licensee or an authorized distributor of same.
Furthermore, the Panel believes that the Respondent does not make a fair use of the domain name, intending to obtain commercial gains by misleading consumers with the likelihood of confusion between the disputed domain name and the trademark GRUNDFOS. The Respondent's format of web page is commonly known as “link farm”, which generates revenue (presumably to Respondent's benefit) in the form of “pay-per-click” in the sponsored links displayed in the page. Indeed, one may conclude that the Respondent does not run any business activity in connection with the disputed domain name.
Considering the overall circumstances, the Panel finds that the Respondent has no right or legitimate interest in respect to the domain name (the Policy, Paragraph 4(a)(ii)).
The Panel finds that it is unlikely that the Respondent was unaware of the Complainant's trademark GRUNDFOS, since the disputed domain name displays sponsored links to inter alia manufactures of pumps, which is the main activity of the Grundfos Group, a manufacturer of pumps with worldwide activities.
Furthermore, that the Complainant already had several registrations worldwide for trademark GRUNDFOS when Respondent registered the disputed domain name on July 18, 2007. In particular the Panel points out that in Respondent's country of origin, Panama, Complainant's trademark is registered since May 15, 1997. Accordingly, the Panel finds that Respondent must likely have had prior knowledge of Complainant's trademark and intentionally tried to take advantage of Complainant's reputation.
This is a case that falls into the concept of “typosquatting”, in which a domain name differs from a well-known trademark by only one letter in order to take advantage of mistakes committed by Internet users when typing the desired domain name.
In this sense, it is important to highlight that the practice of typosquatting, per se, has been found to be evidence of bad faith registration of a domain name, under paragraph 4(a)(iii) of the Policy. The Panel refers, in that aspect, to Sharman License Holdings, Limited v. IcedIt.com, WIPO Case No. D2004-0713; ESPN, Inc .v. XC2, WIPO Case No. D2005-0444; Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556 and SurePayroll, Inc. v. Web Advertising, Corp. WIPO Case No. D2007-0470, where typosquatting was found to be presumptive of bad faith.
The fact that the Respondent hosts a “link farm” under the disputed domain name also leads the Panel to the conclusion that Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing the Complainant's website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177: “Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant's trademark.”
In conclusion, the Panel finds that the Respondent acted in bad faith by using the domain name <grunfospumps.com> to the announcement of numerous services and products, including pump products, has deliberately attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the disputed website.
Accordingly, the Panel determines that the Respondent has acted in bad faith within the meaning of Paragraph 4(b)(iv) 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 <grunfospumps.com > be transferred to the Complainant.
Gabriel F. Leonardos
Dated: July 3, 2010