WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. PrivacyProtect.org / Incredible SEO Mehul (Sailesh Patel / Ajay Soni)
Case No. D2011-1355
1. The Parties
Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert I/S, Denmark.
Respondent is PrivacyProtect.org of Queensland, Australia / Incredible SEO Mehul (Sailesh Patel / Ajay Soni) of Gujarat, India.
2. The Domain Name and Registrar
The disputed Domain Name <groundforcepumps.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2011. On August 9, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed Domain Name. On August 10, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 Complainant on August 12, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
On August 10, 2011, Sailesh Patel sent an email communication from the email address of the disputed Domain Name in which it explained that “We always honour Grundfos …”. On August 11, 2011, Ajay Soni sent another email communication again from the email address of the disputed Domain Name, stating that “… if you want from us to discontinue the [D]omain [N]ame, we shall do that. … “. On August 12, 2011, Ajay Soni contacted the person who appears to be the registrant of the disputed Domain Name, Mr. Mehul Bhadani, ordering him to “handover” the disputed Domain Name.
On August 17, 2011, following a request of Complainant’s authorized representative, the Center suspended the administrative proceedings for 30 days to allow the parties to seek an amicable settlement.
Due to the fact that the parties did not reach any agreement, on September 15, 2011 Complainant filed to the Center a request for re-institution of the proceedings and, simultaneously, an amended Complaint.
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 Respondent of the Complaint, and the proceedings commenced on September 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for a response was October 11, 2011. Respondent did not submit any response. Informal communications were received from Respondent on September 24, 2011. Accordingly, the Center notified Respondent of the commencement of the process of Panel appointment on October 13, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on October 19, 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.
The language of the proceeding is English, pursuant to paragraph 11(a) of the Rules.
4. Factual Background
Complainant in these proceedings is Grundfos Holding A/S, part of the Grundfos Group established in 1945 and owned by the Danish Poul Due Jensen Foundation. The Grundfos Group is represented by more than 50 companies worldwide. Complainant is one of the largest manufacturers of circular water pumps in the world, producing more than 10 million pumps per year.
According to the non-contested allegations provided by Complainant, Complainant is the owner of the trademark GRUNDFOS, registered globally for pumps as early as 1946. The GRUNDFOS trademark was registered in Denmark on June 29, 2006 and in India on June 10, 2006, followed by a Community Trade Mark registration on December 17, 2008. Complainant has successfully asserted the GRUNDFOS mark in two UDRP proceedings. See Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618; Grundfos A/S v. Jan Svoboda, WIPO Case No. D2009-0526. Complainant operates several websites promoting its products and services including <grundfos.com> and <grundfos.in>. Between January 2011 and May 2011, <grundfos.com> received more than 100,000 visitors each month. In an earlier proceeding, the Panel found that the GRUNDFOS brand is “very well-known” in the industry for circular water pumps.
The disputed Domain Name was registered on March 5, 2009.
5. Parties’ Contentions
Complainant contends that the disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed Domain Name, and that Respondent registered and is using the disputed Domain Name in bad faith in order to deceive visitors of the website.
Complainant contends that the disputed Domain Name is confusingly similar to Complainant’s GRUNDFOS mark. Complainant further contends that the disputed Domain Name creates confusion because it is phonetically deceptively similar to the GRUNDFOS mark. Additionally, Complainant contends that the use of the word “pumps” in the disputed Domain Name compounds the likelihood of confusion because the GRUNDFOS brand is used to market pumps to consumers worldwide.
Complainant contends that Respondent has neither rights nor legitimate interests in the disputed Domain Name because Respondent’s sole reason for registering the disputed Domain Name is to attract Internet users to the website by creating confusion with the GRUNDFOS mark for commercial gain. Complainant, however, admits that Respondent’s company is known by the disputed Domain Name (i.e., Groundforce Pumps, Pvt. Ltd.) and that Respondent uses the disputed Domain Name to market its own water pumps.
Complainant further contends that Respondent’s registration was made in bad faith in order to confuse and deceive visitors with a name similar to the well-known trademark GRUNDFOS.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Respondent provided no response, and the deadline for so doing expired on October 11, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Charles Jourdan Holding, AG v. AAIM, WIPO Case No. D2000-0403. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624.
A. Identical or Confusingly Similar
Complainant provides sufficient evidence that it is the owner of valid and subsisting international registrations and rights at common law for the GRUNDFOS mark. Complainant’s registrations for the mark in Denmark and India as well as its Community Registration in the European Union (offered into evidence in Annexes 6, 7 and 8 accompanying the Complaint), taken together with its longstanding, extensive worldwide use of the mark, make such ownership of enforceable trademark rights indisputable. Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066 ([R]egistration of a mark is prima facie evidence of validity … Respondent has the burden of refuting this assumption.”); accord EAuto, L.L.C. v. Triple S. Auto Parts d/b/a/ Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent provides no evidence to refute the conclusion that Complainant possesses valid and enforceable trademark rights.
The disputed Domain Name, however, is not identical to the GRUNDFOS mark. Therefore, the first issue is whether the disputed Domain Name and the GRUNDFOS mark are confusingly similar.
The disputed Domain Name combines four elements: (1) the word “ground”; (2) the word “force”; (3) the word “pumps”; and (4) the suffix “.com.” The relevant comparison to be made is with the second-level portion of the domain name only (i.e., “groundforcepumps”), as it is well established that the top-level domain (i.e. “.com”) should not be included in the analysis for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Complainant submits that even though there is a visual difference arising from “groundforcepumps” and the GRUNDFOS mark there is a likelihood of phonetic confusion. Complainant further argues that “[t]he addition of the word ‘pumps’ to the disputed domain name compounds the likelihood of confusion.”
This Panel agrees that the disputed Domain Name is phonetically confusingly similar to the GRUNDFOS mark. Comparing the first element of the disputed Domain Name, the word “ground,” with the first part of the mark, “GRUND,” the addition of the “o” creates the /ow/ sound which is absent from the mark. Many WIPO panels have ruled, however, that this type of single letter difference is not enough to avoid confusing phonetic similarity. See, e.g., Sierra Health Styles LLC v. Modern Limited-Cayman Web Development, WIPO Case No. D2006-0020 (Holding the domain name <mirival.com> phonetically confusingly similar to the MIRAVAL mark); Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123 (Holding the domain name <mikerosoft.net> phonetically confusingly similar to the MICROSOFT mark); VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303 (Holding the domain name <venesign.com> phonetically confusingly similar to the VERISIGN mark).
Likewise, the second element of the disputed Domain Name, the word “force,” is phonetically confusingly similar to the corresponding “FOS” in the mark. The confusing similarity is especially true with certain pronunciations of English, such as found in British and Indian English speakers, characterized by a lack of the (r) sound (i.e., “dropping r’s”). Given that Respondent is comprised of persons and entities residing in India, the confusing phonetic similarity is especially relevant to this case.
This Panel also recognizes that phonetic similarity is likely to play a role here where a consumer “might unintentionally type in the domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the Internet to ‘guess’ at domain names.” See Sierra Health Styles LLC v. Modern Limited-Cayman Web Development, supra. This Panel further agrees with Complainant that the addition of the word “pumps” in the disputed Domain Name increases confusion with the mark because the GRUNDFOS brand is used to market water pumps worldwide. See Grundfos A/S v. Orion Web, supra (Holding <grundfospump.com> confusingly similar to the GRUNDFOS mark and finding “the addition of the word “PUMP” … particularly increases the impression of a connection with Complainant, as its business is oriented to water pumps.”)
Therefore, this Panel finds that the disputed Domain Name <groundforcepumps.com> is confusingly similar to the GRUNDFOS mark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
This Panel finds that Complainant has not made a sufficient showing on the present record that Respondent lacks rights or legitimate interests in the disputed Domain Name. Complainant admits that Respondent has used the disputed Domain Name to market its own products. Furthermore, Respondent’s business appears to be commonly known by the disputed Domain Name, which would establish a legitimate interest pursuant to paragraph 4(c)(ii) of the Policy. Indeed, an Internet search of “Groundforce Pumps” leads to a webpage describing Respondent’s products. Indiamart, Ground Force Pumps Private Limited, “http://www.indiamart.com/groundforcepumps/” (last visited October 27, 2011); see Pinnacle Intellectual Property v. World Wide Exports, WIPO Case No. D2005-1211 (Denying transfer of the domain name <canadamedicineshop.com> and stating “[w]hat seems undisputed, however, is that Respondent engages in the sale of pharmaceutical products under the name CanadaMedicineShop.”)
While Respondent’s case is not assisted by the absence of a response, this is not a case in which there are strong or even typical indicia of cybersquatting (such as, for example, a pattern of abusive registration of domain names by Respondent) – in fact, quite the contrary. The evidentiary burden on a Complainant in such a case to present appropriate supporting material for its claims is commensurately higher in order to establish a prima facie case under the second element of the Policy. However, Complainant has not presented any further evidence to overcome its admission or the apparent existence of Respondent’s company bearing the disputed Domain Name. Complainant’s bald assertion that “Respondent has absolutely no rights or legitimate interests” does not constitute evidence. As mentioned above, Complainant bears the burden to show Respondent’s lack of rights or legitimate interests. See Do the Hustle, LLC v. Tropic Web, supra. Complainant has not met this burden.
Therefore, this Panel finds that Complainant has failed on the provided record in these proceedings to establish that Respondent lacks a right or legitimate interest in the disputed Domain Name.
C. Registered and Used in Bad Faith
Because this Panel finds that Respondent possesses a legitimate interest in the disputed Domain Name, it need not rule on the issue of Respondent’s bad faith registration and use. This Panel notes, however, that Complainant has not met its burden on this element either. Complainant presents no evidence or argument beyond the unsupported assertion that “Respondent’s registration … is undoubtedly made in bad faith … to create a likelihood of confusion with the Complainant’s trademark.”
Accordingly, this Panel finds that Complainant has not proven Respondent’s bad faith registration and use of the disputed Domain Name on the record in these Policy proceedings.
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Dated: October 31, 2011