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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. Allen Nazarian

Case No. D2010-1480

1. The Parties

The Complainant is Grundfos A/S of Bjerringbro, Denmark, represented by Bech-Bruun Law Firm, Denmark.

The Respondent is Allen Nazarian of Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <grundfoswholesale.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2010. On September 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On September 3, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 September 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2010.

The Center appointed Luiz E. Montaury Pimenta as the sole panelist in this matter on October 11, 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.

4. Factual Background

The Complainant is part of the Grundfos Group established in 1945. The company was founded by Mr. Poul Due Jensen and is today ultimately owned by the Poul Due Jensen Foundation. The Grundfos Group is one of the largest and leading manufacturers of high technology pumps and pump systems in the world.

The Grundfos Group is represented by more than 82 companies in 45 countries around the world, including in the United States (“U.S”). In addition Grundfos products are merchandised by distributors in a large number of countries.

By the end of 2009 the Grundfos Group had approximately 15,800 employees and the net turnover in 2009 exceeded DK 17.0 billion. The Complainant trades under the widely-known name and trademark GRUNDFOS, including in the U.S. The Complainant originally registered the name GRUNDFOSS for pumps as early as in 1946. GRUNDFOSS was later changed to GRUNDFOS in 1967.

Today the GRUNDFOS trademark is registered worldwide, including in Denmark and the U.S.. The Complainant’s name and trademark GRUNDFOS is widely-known all over the world and especially within the relevant industries.

The disputed domain name <grundfoswholesale.com> registered by the Respondent was first registered on May 17, 2010 and is currently used for a website displaying sponsored links to inter alia manufacturers of pumps on a website under the disputed domain name.

On July 8, 2010, a cease and desist letter was send to the Respondent (Domains By Proxy, Inc) requesting that the Respondent transfer the disputed domain name free of charge to the Complainant no later than July 22, 2010. The letter remains unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name must be considered to be confusingly similar with the Complainant’s well-known trademark GRUNDFOS.

The Complainant makes reference to Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618, whereby it was concluded that the Complainant’s trademark GRUNDFOS must be characterised as “very well known”.

The Complainant alleges that, due to the fact that the disputed domain name consists mostly of the Complainant’s well-known trademark, a likelihood of confusion clearly exists, as the dominant and characteristic part of the domain name is “Grundfos”.

Furthermore, the Complainant asserts that the addition of the term “wholesale”, which is a generic word, 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. Moreover, the Complainant further states that in the case at issue the relevant public could be induced to assume that they are able to buy original Grundfos products from the Complainant on the website or the relevant public will be led to believe that the website is owned by or related to the Complainant.

The Complainant submits that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant alleges that the Respondent’s reasons for the registration of the disputed domain name must be considered to be use of the disputed domain name for attracting Internet users to the website under the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website under the disputed domain name.

The Complainant states that the Respondent’s format of webpage is commonly known as a “link farm”, which generates revenue in the form of “pay-per-click” sponsored links displayed in the page. The Complainant informs that, indeed, one may conclude that the Respondent does not run any business activity in connection with the disputed domain name.

The Complainant informs it has not licensed or otherwise permitted the Respondent to use its GRUNDFOS trademark or to apply for any domain name incorporating the trademark. There is no business relationship between the Grundfos Group and the Respondent. The Complainant concludes that the disputed domain name is not used in connection with a bona fide offering of goods.

The Complainant submits that the disputed domain name which incorporates the Complainant’s registered trademark GRUNDFOS has been registered and is being used in bad faith. The Complainant states that the Respondent appears to have acquired the disputed domain name on May 17, 2010 and that the Complainant’s trademark, on the other hand, has been established many years ago (the Complainant applied for the trademark GRUNDFOS in Denmark in 1967). The Complainant asserts that the Respondent is infringing the Complainant’s trademark rights by making commercial use of a designation confusingly similar to the Complainant’s trademark GRUNDFOS.

The Complainant asserts that its trademark GRUNDFOS is well-known worldwide and that, therefore, it is unlikely that the Respondent is 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. The Complainant concludes it is evident that the substantial intention of the registration and use of the disputed domain name is to profit on an illegal exploitation of the goodwill and reputation related to the Complainant’s well-known company name and trademark GRUNDFOS.

The Complainant alleges that the Respondent, by using the Complainant’s trademark, diverts Internet traffic to his own site for his own commercial gain, thereby potentially depriving the Complainant of visits by Internet users. Based on the above, the Complainant concludes that the registration and use of the disputed domain name is made in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, the Complainant is required to prove the presence of each of the following three elements to obtain the remedy it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

The Panel finds that the Complainant’s registered trademarks are distinctive in its field of activity and have reached strong reputation and notoriety in many countries. The Panel finds that the disputed domain name is confusingly similar with the Complainant’s GRUNDFOS registered trademarks and company name. The only difference between the Complainant’s registered trademark and the disputed domain name is the addition of the generic term “wholesale”, which is a term that can refer to the Complainant’s activities and is merely descriptive.

The Panel finds that the difference indicated above is not enough to characterize the disputed domain name as being distinct from the Complainant’s registered trademarks. See Columbia Pictures Industries, Inc. v. Caribbean Online International Ltd., WIPO Case No. D2008-0090 (“adding or removing letters to a domain name is not sufficient to escape the finding of similarity and does not change the overall impression of the designation as being connected to the trademark of Complainant.”).

The Panel finds that this similarity is likely to increase the possibility of confusion and mislead Internet users who search for the Complainant’s services and divert them to the disputed domain name.

The Panel, therefore, finds that the Complainant has established the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Taking into consideration that the Respondent has failed to respond to the Complaint, the Panel will analyze the facts and circumstances brought by the Complainant to verify if the Respondent lacks rights and legitimate interests in the disputed domain name.

As a matter of fact, the Complainant has made a prima facie case in support of its allegations and, due to this, the burden of production shifts to the Respondent to show that it does have rights or legitimate interests in the disputed domain name, according to paragraph 4(a)(ii) of the Policy.

With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the disputed domain name.

With respect to paragraph 4(c)(iii) of the Policy, the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name.

At the time the Complaint was filed and at the time this Decision was rendered, the disputed domain name was associated with a website that displayed pay-per-click advertisements of third parties, including competitors of the Complainant. The Panel finds that this is not a bona fide offering of goods and services.

Thus, in view of the above, the Panel finds that the Complainant has established the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s site or of a product or service offered on the respondent’s site.

The Panel finds that the Respondent registered the disputed domain name in bad faith.

The Respondent has intentionally registered the disputed domain name which totally reproduces the Complainant’s widely-known trademark GRUNDFOS. By the time the disputed domain name was registered, it is highly unlikely that the Respondent would have been unaware of the Complainant’s pre-existing rights on its trademark GRUNDFOS when registering the disputed domain name.

The Complainant’s allegations of bad faith are not contested. The evidence provided by the Complainant confirms that it had long been using its GRUNDFOS registered trademark when the disputed domain name was registered. Moreover, the Complainant submitted evidence that its trademark is widely known. The Panel finds that the Respondent must have been aware of the Complainant’s rights in the mark and, further, that the Respondent knowingly infringed the Complainant’s trademark when it registered the disputed domain name.

Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” Policy paragraph 4(b)(iv). The Panel finds that the Respondent used the Complainant’s widely-known trademark to attract users to the Respondent’s website that displayed pay-per-click advertisements of third parties, including competitors of the Complainant. This is evidence of the intention by the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.

In light of these facts, the Panel finds that the Complainant has established the third element of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <grundfoswholesale.com> be transferred to the Complainant.

Luiz E. Montaury Pimenta
Sole Panelist
Dated: October 25, 2010

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