WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos A/S. v. Frank Manning Eng ltd.
Case No. DCO2011-0038
1. The Parties
The Complainant is Grundfos A/S. of Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Frank Manning Eng ltd. of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <grundfospumps.co> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2011. On June 29, 2011, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On June 29, 2011, Network Solutions, LLC 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 July 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2011. On July 1, 2011 and July 4, 2011, the Center received informal email communication from the Respondent. The Respondent did not submit any formal response before the Response due date. Accordingly, the Center notified the Respondent’s default on July 22, 2011.
The Center appointed Marilena Comanescu as the sole panelist in this matter on July 28, 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.
4. Factual Background
The Complainant is part of the Grundfos Group established in 1945, with GRUNDFOSS being changed to GRUNDFOS in 1967. According to the Complaint, the Grundfos Group is one of the largest manufacturers of high technology pumps and pump systems in the world and its GRUNDFOS name and trademark is well known. The Grundfos Group had some 16,600 employees at the end of 2010 and its net turnover exceeded DK 19.0 billion. The Grundfos Group is represented by over 82 companies around the world, including those in the United Kingdom. The Complainant trades under the name and trademark GRUNDFOS, including in the United Kingdom and Colombia.
The Complainant owns trademark registrations for GRUNDFOS worldwide, including in the United Kingdom since 1963 and in Colombia since 1998.
The Complainant operates its official website at “www.grundfos.com”.
The disputed domain name was registered on August 12, 2010.
The Respondent is one of the many distributors of the Complainant’s products in the United Kingdom.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:
(i) The disputed domain name <grundfospumps.co> is confusingly similar to its trademark GRUNDFOS:
The GRUNDFOS trademark must be considered well-known, as also stated in previous UDRP decisions. The disputed domain name consists of the Complainant’s trademark as the dominant part and the generic descriptive term “pumps” which indicates the products for which Complainant is using its trademark.
Further, the disputed domain name is registered in the ccTLD for Colombia, “.co” country where the Complainant owns trademark registration for GRUNDFOS, thus inducing the false impression that the website operated under the disputed domain name is owned and run by the Complainant and this is detrimental to the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
Although in one reply to Complainant’s Cease and Desist letters the Respondent stated that the disputed domain name was achieved for increasing the sales for Complainant’s products, at the time of filing the Complaint the Respondent was using the disputed domain name in connection to a “link farm”, a website displaying sponsored links containing, inter alia, products of Complainant’s competitors.
The Complainant has not granted the Respondent any license or permission to own or use its GRUNDFOS trademark or any domain name incorporating the same.
(iii) The disputed domain name was registered and is being used in bad faith:
The disputed domain name was registered in 2010 whereas the Complainant’s trademark rights have been established even since 1967.
The Complainant’s trademark is well-known and the Respondent is a local distributor of the Complainant’s products therefore it is obvious that the Respondent was familiar with the Complainant and its business at the time it registered the disputed domain name. Consequently, the registration of the disputed domain name and use of the same is to profit on an illegal exploitation of the goodwill and reputation related to the Complainant’s name and trademark.
Even if the Respondent is a local distributor of the Complainant’s products in the United Kingdom, according to Complainant’s strict policy, no distributors, retailers or others are allowed to use its GRUNDFOS trademark in whole or in part for the purpose of registering domain names. Furthermore, at the time of filing the Complaint, the disputed domain name was connected to a website containing sponsored links promoting various goods, including products in direct competition with the Complainant’s products.
On July 1, 2011 and July 4, 2011, the Center received informal email communications from the Respondent. The Respondent did not however reply to the Complainant’s contentions.
From the responses to the Cease and Desist letters sent by the Complainant prior to commencing the present procedure (Annexes 15 and 17 to the Complaint), the Respondent directly or via representative asserts the following:
“As we are the local official distributer on Merseyside for Grundfos products, and we are trying to improve our sales with the company, we thought this would be a good acquisition to improve our sales. “
“The background to this is that our client has been, for the past 43 years, the official distributor of your client’s products in the Merseyside region of England. (….)
The purpose of our client’s acquisition and registration with, the domain name complained of, has been only to achieve an increase in the orders from its customers for the supply of your client’s pumps. Any such increase would inevitably benefit your client, as such increased demand for your clients pumps would be sourced from your client, whether directly nr indirectly. That can only be for the mutual benefit of our respective clients.
The steps taken by our client have been designed to attempt to address those concerns. It should be made clear that our client has not, to date, made actual use of its registration with the notified domain name. At such time as it is put to use, the intention will be to increase the visibility of our client, through its own website, in internet search engines with reference to enquiries, within the United Kingdom, for your client’s product.” (…)
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(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 does not have rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used by the respondent in bad faith.
Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.
A. Identical or Confusingly Similar
There are two requirements that a complainant must establish under this element, namely: that it has rights in a trademark, and, if so, that the disputed domain name is identical or confusingly similar to its mark.
The Complainant has rights in the GRUNDFOS trademark, holding registrations worldwide, including in the United Kingdom, where the Respondent is apparently located and is conducting its business, and in Colombia, the corresponding country for the “.co” country code Top Level Domain.
The dominant part of the disputed domain name represents the Complainant’s trademark GRUNDFOS. In addition to this, the disputed domain name contains the word “pumps” which is closely related to the Complainant’s business. Therefore, an Internet user would most probably assume a connection with the Complainant when seeking information on a website with the domain name <grundfospumps.co>.
Also, a wide variety of UDRP panels have considered that the addition of generic or descriptive words to trademarks in a domain name is not sufficient to escape the finding of confusing similarity and does not change the overall impression of the domain name as being connected to the complainant’s trademark (see Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511; Sanofi-Aventis, Aventis Inc. v. Searchology, Domain Registrant, WIPO Case No. D2007-0889; Sanofi-aventis v. One Star Global, WIPO Case No. D2006-0583).
The “.co” country code Top Level Domain for Colombia is irrelevant in the present analysis.
For all the above, the Panel finds that the disputed domain name <grundfospumps.co> is confusingly similar to the Complainant’s GRUNDFOS trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has not granted the Respondent the right to owe, register or use its trademark. Therefore, the burden of production of evidence on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain name.
The Respondent failed to submit any response in the present procedure.
From the responses to Complainant’s letters regarding the transfer of the disputed domain name, the Respondent asserts it has made the registration of the same in order to increase sales of Complainant’s products. Contrary to its assertions, the Respondent is using the disputed domain name as a portal for sponsored links for various goods, including products competing to those of the Complainant. In the eyes of the Panel, this is definitely not a bona fide use of the disputed domain name.
The fact that the Respondent is one of the many distributors of the Complainant is not itself a permission to register and use Complainant’s trademark in this disputed domain name especially given the Complainant’s strict policy with regard to its trademark registration and use.
Furthermore, according to the majority view of the UDRP panels1, 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 such as 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. Furthermore, the 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.
For all these reasons, the Panel finds that the second element of the Policy is established and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
It is obvious for the Panel that the disputed domain name was registered with Complainant’s trademark and business in mind mainly because the Respondent is an authorised distributor of Complainant’s products. Furthermore, holding such capacity, the Respondent should have been aware of Complainant’s policy related to the registration and use of its trademark and trade name in the sense that the Complainant should be the proprietor of all domain names incorporating its trademark GRUNDFOS.
Although Internet can be accessed worldwide it is still difficult for the Panel to infer a bona fide registration of a domain name in a ccTLD completely random, as the Respondent is a distributor of the Complainant’s goods in the United Kingdom and it has registered the disputed domain name in the ccTLD for Colombia. Along with the rest of the evidence before the Panel, it can be inferred that again, it was registered having in view both the trademark and the main website of the Complainant <www.grundfos.com> and in order to take advantage of the potential confusion between the relevant mark, the gTLD “.com” and the ccTLD “.co”.
Further, although the Respondent mentioned that the registration of the disputed domain name was with the purpose of increasing the sales for Complainant’s products, at the time of filing the Complaint the website corresponding to the disputed domain name is a web portal providing sponsored links, the classic method to generate financial gain via the pay-per-click or click-through device, whereby the operators of other websites pay a commission to the Respondent for traffic redirected to them. Furthermore, some of the listed links contain products directly competing with those of the Complainant.
Paragraph 4(b)(iv) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
Given the awareness of the GRUNDFOS brand worldwide, indeed, an Internet user accessing the website corresponding to the disputed domain name <grundfospumps.co> and on which webpage are listed several links providing various goods including pumps may be confused and believe that it is a website held and controlled by the Complainant, or somehow affiliated or related to it.
The Respondent chose not to participate in this procedure, has not contested any of the allegations made by the Complainant and did not provide any evidence whatsoever of any legitimate noncommercial, or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark and therefore reinforces this approach.
The Respondent’s assertions in the responses to the Cease and Desist letters addressed by the Complainant are in contradiction with the facts of record in this case: the disputed domain name was used in connection to a web portal for sponsored links and not to promote Complainant’s products.
For all these reasons, the Panel finds that the third element of the Policy is on balance established on the record in these proceedings, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <grundfospumps.co> be transferred to the Complainant.
Dated: August 25, 2011
1 See Section 2.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")