World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. Arturo Del Castillo, Grundfos

Case No. D2011-0112

1. The Parties

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

The Respondent is Arturo Del Castillo, Grundfos of Bogota, Colombia.

2. The Domain Name and Registrar

The disputed domain name <grundfos-au.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2011. On January 20, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 20, 2011, eNom 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 January 31, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2011.

The Center appointed Zentaro Kitagawa as the sole panelist in this matter on March 2, 2011. 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.

Due to exceptional circumstances, the due date was extended to April 1, 2011.

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 Poul Due Jensen’s 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 South America. In addition Grundfos products are merchandised by distributors in a large number of countries.

The Complainant is doing business under the name and trademark GRUNDFOS, including in South America. Today the GRUNDFOS trademark is registered worldwide, including in Denmark, the European Union and Colombia. The Complainant’s name and trademark GRUNDFOS is known all over the world.

The disputed domain name <grundfos-au.com> owned by the Respondent was registered on August 5, 2010 and is currently not actively used.

5. Parties’ Contentions

A. Complainant

5.1 Confusingly similar

The disputed domain name <grundfos-au.com> consists mostly of the Complainant’s well-known trademark, a likelihood of confusion between the trademark and the disputed domain name clearly exists, as the dominant and characteristic part of the domain name is “grundfos”. The addition of the suffix “-au” 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. Furthermore, this suffix is identical to the country code for Australia. The Complainant is marketing and selling its products in Australia, and the Grundfos Group is furthermore the owner of the domain name <grundfos.com.au>. The Respondent’s use of the domain name <grundfos-au.com> will mislead existing and potential new customers to believe that the Respondent is acting as an authorized dealer of Grundfos products.

The disputed domain name <grundfos-au.com> must clearly be considered to be confusingly similar with the Complainant’s very well-known trademark GRUNDFOS.

5.2 Rights or legitimate interests

The Respondent is currently not making any actual use of the disputed domain name <grundfos-au.com>. The mere registration of a domain name does not establish rights or legitimate interests in that domain name. The Complainant 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. Consequently, the disputed domain name is not used in connection with a bona fide offering of goods.

The Respondent has no rights or legitimate interest in respect of the disputed domain name, and the Respondent is in no way or form connected to or associated with the Complainant or the Grundfos group.

5.3 Bad faith

The Respondent is currently not making any use of the disputed domain name. Such passive holding can be considered as bad faith use by the Respondent because the Complainant’s trademark GRUNDFOS is well-known worldwide. Thus it is unlikely that the Respondent is unaware of the Complainant’s trademark GRUNDFOS. Consequently, the substantial intention with the registration of the disputed domain name <grundfos-au.com> is to profit an illegal exploitation of the goodwill and reputation related to the Complainant’s well-known company name and trademark GRUNDFOS.

The Respondent acquired the disputed domain name on August 5, 2010. But the Respondent has provided no evidence of any actual or contemplated good faith use of the disputed domain name and the Respondent did not reply to the Complainant’s warning letters.

The Respondent does not have the right to use a domain name which incorporates the Camplainant’s trademark. By using the Complainant’s trademark, the Respondent is likely to divert Internet traffic to his own site for his own commercial gain, thereby potentially depriving the Complainant of visits by Internet users, who might end their search for the Complainant’s products and/or website, when reaching the Respondent’s inactive website.

Based on the above, the registration and use of the disputed domain name is undoubtedly made in bad faith.

B. Respondent

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

6. Discussion and Findings

A. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The dominant part of the disputed domain name <grundfos-au.com> comprises the word ”grundfos”, which is identical to the trademark GRUNDFOS registered by the Complainant. The addition of the top-level domain (Tld) “com” and the addition of the suffix “-au” do not have any impact on the overall impression of the domain name and is therefore irrelevant to determine whether or not the domain name <grundfos-au.com> is confusingly similar to the Complainant’s trademark. Furthermore, the “-au” suffix is identical to the country code for Australia. The Complainant is marketing and selling its products in Australia, and the Grundfos Group is furthermore the owner of the domain name < grundfos.com.au>. The Respondent’s use of the domain name <grundfos-au.com> will mislead existing and potential new customers to believe that the Respondent is acting as an authorized dealer of Grundfos products.

The Panel finds that the disputed domain name <grundfos-au.com> is confusingly similar to the Complainant’s trademark GRUNDFOS.

B. The Respondent has no rights or legitimate interests in respect of the Domain Name

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent registered the disputed domain name <grundfos-au.com> on August 5, 2010. The disputed domain name has not been taken into any real use. The mere registration of a domain name does not establish rights or legitimate interests in that name. Furthermore, the Complainant has never given the Respondent license or authorization of any kind to use the Complainant’s trademark. For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of disputed the domain name <grundfos-au.com>.

C. The Domain Name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

As the Complaint indicates that the Complainant’s trademark GRUNDFOS has the status of a well-known trademark, this trademark must have been known to the Respondent. Furthermore, the Respondent obviously has no business or any connection to the Complainant.

It follows from the circumstances of this case that the domain name <grundfos-au.com> was registered and is used in bad faith, unless duly contested by the Respondent. After the Complainant became aware of the Respondent’s registration in August 2010, the Complainant sent twice a cease and desist letter to the Respondent, requesting that the Respondent transferred the disputed domain name free of charge to the Complainant. The Respondent did not reply the Complainant at all. After the Complaint was filed with the Center on January 19, 2011, the Center formally notified the Respondent of the Complaint, but the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2011.

Consequently, the Panel considers that the Respondent registered and uses the disputed domain name <grundfos-au.com> in bad faith.

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 <grundfos-au.com> be transferred to the Complainant.

Zentaro Kitagawa
Sole Panelist
Dated: March 23, 2011

 

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