WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. weile
Case No. D2015-1748
1. The Parties
The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is weile of Jiangsu, China.
2. The Domain Name and Registrar
The disputed domain name <grundfoscn.com> (the "Domain Name") is registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 1, 2015. On October 1, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On October 8, 2015, the Center transmitted an email to the Parties in English and Chinese regarding the language of proceeding. On the same day, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not submit any comments regarding the language of proceeding by the specified due date.
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 and 4, the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceeding commenced on October 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on November 18, 2015. 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 Grundfos Group is one of the largest and leading manufacturers of pumps in the world. It produces more than 16 million pumps a year including centrifugal, submersible, dosing and other pumps. As at the end of 2014, the Grundfos Group has approximately 19,000 employees in more than 80 companies in over 55 countries and a net turnover of over USD 4.1 billion. It was the first pump manufacturer in the world to be certified according to the ISO 9001 Quality Standard.
The Grundfos Group trades and conducts its world wide business under the name "Grundfos". The goodwill of the entire group was estimated to be worth EUR 57 million. It owns the trade mark GRUNDFOS which is registered in many countries all over the world. The earliest trade mark registration for GRUNDFOS submitted as evidence dates back to 1968.
The Respondent registered the Domain Name on March 3, 2013. It is connected to a website ("the Website") which displays the Complainant's GRUNDFOS trade mark and displays the Complainant's pumps. The Complainant sent a cease and desist letter to the Respondent on June 29, 2015 to which it did not receive any response.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the GRUNDFOS trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
B. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the Registration Agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits in paragraph 42 of the Complaint and in an email dated October 8, 2015 that the language of the proceeding should be English. The Complainant has filed the Complaint in both English and Chinese. It contends that prior to the filing of the Complaint, its communications with the Respondent had been in English and the Respondent has not objected to this.
The Panel accepts the Complainant's request regarding the language of the proceeding. The Respondent has received the Complaint in both English and Chinese. All communications from the Center to the Parties were transmitted in both Chinese and English. There is therefore no question of the Respondent not being able to understand the Complaint. The Respondent chose not to respond to the Complaint or the language of the proceeding communication by the specified due dates. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the name GRUNDFOS through use and registration that predates the Domain Name.
The consensus view under paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") says this:
"The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."
The Domain Name integrates the Complainant's registered trade mark GRUNDFOS with the two letter suffix, "cn" which is the acronym for China and the generic Top-Level Domain ("gTLD") ".com". For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix. The word "Grundfos" is clearly recognizable within the Domain Name. The addition of the letters "cn" as a suffix at the end of the word "Grundfos" does not negate the confusing similarity encouraged by the Respondent's complete integration of the GRUNDFOS trade mark in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the GRUNDFOS trade mark of the Complainant, and that the requirements of paragraph 4(a)(i) of the Policy are therefore fulfilled.
D. Rights or Legitimate Interests
The Complainant alleges that it is not cooperating or trading with the Respondent. The Respondent has not been authorized to use the Complainant's trade mark in its domain name or in any other manner.
"Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to 'corner the market' in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark."
In this case, the Respondent is not an authorized dealer, reseller or repairer. Nonetheless, the Website with pictures of the Complainant's products and prominent display of the Complainant's trade mark gives the appearance that it is the Chinese website of the Complainant or somehow connected to the Complainant. There is nothing on the Website which indicates to visitors that the parties are not related. It is clear to this Panel that the content of the Website is intended to mislead Internet users that there is a connection between the Complainant and the Respondent. Therefore, the Panel finds the Oki Data principles for the rights or legitimate interests are not satisfied in this case. The Panel also takes the view as stated in the WIPO Overview 2.0 "… that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark."
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
E. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a conjunctive requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant's GRUNDFOS trade mark when it registered the Domain Name. The fact that the Domain Name incorporates the Complainant's well-known trade mark in its entirety and the appearance of the Website which gives the impression that it is the Chinese website of the Complainant without its authorization is in the Panel's view evidence that the registration of the Domain Name was in bad faith.
The Panel also concludes that the actual use of the Domain Name is in bad faith. The use of the Complainant's trade mark as the dominant part of the Domain Name is intended to capture Internet traffic from Internet users who are looking for the Complainant's products. The Domain Name and the content of the Website is calculated to confuse Internet users into believing that the Respondent is part of the Complainant's group of companies, an authorized agent or somehow connected to the Complainant when this is not the case. This shows a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Respondent's website and the products on display are authorized or endorsed by the Complainant.
The above is clearly bad faith under paragraph 4(b)(iv) of the Policy and the Panel concludes that the Respondent's registration and use of the Domain Name are in bad faith.
For 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 <grundfoscn.com> be transferred to the Complainant.
Date: December 3, 2015