WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. Michael McGlothlin
Case No. D2015-0811
1. The Parties
The Complainant is Grundfos Holding of A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Michael McGlothlin of Cedar, Utah, United States of America ("USA").
2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") <grundfos-pumps.biz> is registered with GoDaddy.com, LLC. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2015. On May 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 12, 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.
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 May 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 4, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 5, 2015.
The Center appointed Charné Le Roux as the sole panelist in this matter on June 17, 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 one of the largest and leading manufacturers of pumps in the world. It trades under the name Grundfos Group and has been doing so since the date that it was established in 1945. The Complainant was the first pump manufacturer in the world to be awarded the ISO9001 Quality Standard in 1989. The Complainant's group of companies includes more than 80 companies operating in over 55 countries in the world, including the USA, where the Respondent is situated. The Complainant owns a large portfolio of trade mark registrations for the mark GRUNDFOS, totaling a number of 98, that extends to most jurisdictions in the world, including the European Union and the USA. The Community registration is dated December 17, 2008 and the USA registration December 22, 1964. The registrations cover a broad range of goods in classes 7, 9 and 11.
The Disputed Domain Name was registered by the Respondent on February 23, 2011. The website attached to the Disputed Domain Name, according to investigations conducted by the Panel, resolves to the website at "www.plumberstock.com" through which tools, hardware and pumps are sold, including the pumps of the Complainant and its competitors.
On November 19, 2014, the Complainant's representative wrote to the Respondent requesting it to transfer the Disputed Domain Name to it. The letter drew attention to the Complainant's trade mark rights and called for compliance by November 29, 2014. Two reminders were subsequently addressed to the Respondent, without any response.
5. Parties' Contentions
The Complainant provided substantial information regarding the development and history associated with its GRUNDFOS trade mark. It asserts that it has been using this trade mark since 1945 in connection with a wide variety of pumps and that these pumps are distributed worldwide. The Complainant contends that the GRUNDFOS trade mark is extremely well known. It states, in support of this contention, that the Complainant is one of the largest manufacturer of pumps in the world, that it has approximately 19,000 employees in more than 80 companies and that its net turnover in 2014 exceeded USD 4.1 billion.
The Complainant provided information regarding numerous awards that it has received for its pumps, the substantial media publicity that it generates and its global operations in Europe, the Africa mid-east region and the Asia Pacific region in North America and South America. It asserts that it operates several websites, including websites under the domain name <grundfos.com>. The Complainant also provided evidence of a total of 37 UDRP complaints filed with the Center in connection with conflicting domain names and argues that its vigilance in protecting its trade mark is demonstrated by the fact that in all but one complaint, UDRP WIPO panels have found that the disputed domain names should be transferred to the Complainant. The Complainant also refers to two of these decisions, where the panel concluded that the GRUNDFOS trade mark is a well known trade mark (see Grundfos A/S v. Orion Web; WIPO Case No. D2005-0618 and Grundfos A/S v. Jan Svoboda, WIPO Case No. D2009-0526).
The Complainant furthermore and as stated above, provided evidence of 98 registrations worldwide for the mark GRUNDFOS.
The Complainant contends that the Disputed Domain Name is confusingly similar to the GRUNDFOS trade mark in which it holds rights. It points out that the Disputed Domain Name wholly incorporates its GRUNDFOS trade mark, and that this, coupled with the element "pumps", which is the Complainant's primary area of business, will enhance the likelihood of confusion. The Complainant relies on the case of Grundfos A/S v. Orion Web; WIPO Case No. D2005-0618, where the panel found that the domain name <grundfospumps.com > was confusingly similar to its GRUNDFOS trade mark.
The Complainant also asserts that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a. The Respondent is not commonly known by the Disputed Domain Name;
b. The Respondent's reason for the registration of the Disputed Domain Name was to confuse it with the Complainant's well known GRUNDFOS trade mark; and
c. The Respondent's intention with the registration of the Disputed Domain Name was thus to profit from it, by attracting Internet users to the website associated with the Disputed Domain Name by creating a likelihood of confusion with the Complainant's trade mark as to the source, affiliation or endorsement of the said website.
The Complainant submits that the Disputed Domain Name was registered and is being used in bad faith. It states that the fame associated with the GRUNFOS trade mark is so significant that the Respondent must have been aware of the Complainant's rights in the trade mark. The Complainant argues that the Respondent clearly registered the Disputed Domain Name with the intention of taking advantage of the confusion between the Disputed Domain Name and the Complainant's GRUNDFOS trade mark, a fact borne out by the subsequent listing of products featuring the Complainant's trade mark on the website associated with the Disputed Domain Name.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has acquired rights in the GRUNDFOS trade mark by virtue of its substantial portfolio of trade mark registrations for it and its considerable use of the mark for close to 8 decades. The Complainant has also demonstrated that the GRUNDFOS trade mark is well known, a fact confirmed by two other panels in connection with complaints lodged by the Complainant, as referenced above.
Ignoring for this purpose the generic Top-Level Domain suffix (as the Panel is entitled to do), the Panel finds that the combination of the Complainant's well known trade mark with the descriptor "pumps" and the hyphen will suffice for the purposes of finding that the Disputed Domain Name is confusingly similar to a mark in which the Complainant has rights.
The Complainant has satisfied this Policy requirement.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, namely that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. This is accomplished as follows:
"Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at paragraph 2.1 in this regard.
The Complainant asserts that its GRUNDFOS trade mark is world famous and that is has not granted the Respondent any rights in respect of the Disputed Domain Name, that the Respondent is not known by the Disputed Domain Name, or has made any legitimate or fair use of the Disputed Domain Name, but rather that the registration and use of the Disputed Domain Name was to profit from the Complainant's reputation.
The Panel finds that the Complainant has made the prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer. The Respondent has not disputed any of the claims made by the Complainant and it has not provided any answer. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Respondent has clearly registered the Disputed Domain Name primarily with an intention to capitalize on the reputation attached to the Complainant's famous trade mark, by diverting Internet users seeking information about the Complainant to the Respondent's own website in order to obtain financial reward. The subsequent use that the Respondent has made of the Disputed Domain Name, namely by offering for sale on the website linked to the Disputed Domain Name products of the Complainant and also products competing with that of the Complainant, corresponds with its intention at registration.
The GRUNDFOS trade mark is well known and it is impossible that the Respondent could not have appreciated that it was a registered and well known trade mark, that it would have substantial commercial value and that anyone who would be making unauthorized use of a domain name that incorporates this trade mark would be likely to be improperly trading on the Complainant's rights. The Respondent had opportunities both when the Complainant's representatives sent a cease and desist letter to it and in this administrative proceeding, to demonstrate its rights or legitimate interests or its good faith conduct, or to challenge the Complainant's contentions, but it elected not to take up these opportunities.
Taking all of the above circumstances into account, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iv) of the Policy.
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<grundfos-pumps.biz> be transferred to the Complainant.
Charné Le Roux
Date: June 25, 2015