WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. Wu Ai Zhong
Case No. D2018-0436
1. The Parties
The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Wu Ai Zhong of Hegang, Heilongjiang, China.
2. The Domain Name and Registrar
The disputed domain name <lygrundfos.com> is registered with Xin Net Technology Corp. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on February 26, 2018. On February 26, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2018, 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 March 1, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the 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 in English and Chinese of the Complaint, and the proceedings commenced on March 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 28, 2018.
The Center appointed Douglas Clark as the sole panelist in this matter on April 4, 2018. 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 a Danish company and a leading world pump manufacturer.
The Complainant is the owner of the registered trademarks GRUNDFOS in China in Class 11 under registration no. 5800285 registered from February 7, 2010.
The disputed domain name was registered on January 16, 2018.
The Respondent is an individual based in China.
The disputed domain name resolves to a website which prominently features the Complainant's name in Chinese "丹麦格兰富" (that is, Denmark Grundfos) and states that it deals in pumps. The website claims that the company using the website (Dahua Pumps) is a distributor of the Complainant's products along with products of a number of Chinese companies. The address given of the shop is in Luoyang, Henan Province, China. The website under the disputed domain name appears to be in a developmental stage: some pages have full text; others have placeholder text; and, others have no text at all. Some pages display faucets for sale with the prices for those faucets.
5. Parties' Contentions
The Complainant's contentions are as follows.
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <lygrundfos.com> and the trademark GRUNDFOS are identical or confusingly similar. The disputed domain name incorporates the entirety of the Complainant's trademark with the addition of the letters "ly". The Complainant also contends that the trademark GRUNDFOS is a well-known mark and should be given enhanced protection.
No rights or legitimate Interests
The Respondent has no connection with the Complainant and has never sought or obtained any trademark registrations for the trademark GRUNDFOS. The Respondent is not a licensee of the Complainant. It, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faith
The Complainant submits that due to the Complainant's fame, there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant's rights in the trademark GRUNDFOS and its registration and use of the disputed domain name is therefore in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceedings
The language of the Registration Agreement is in Chinese.
The Complainant requests that the language of proceedings be English on the grounds that the website under the disputed domain name is partially in English and communications have been sent to the Respondent in English which have not been objected to.
The Respondent did not respond to this request.
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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."
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceedings lies with this Panel.
The Respondent did not respond to the Center's preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceedings "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
Given the Respondent has not responded, in the circumstances of this case, the Panel determines that English shall be the language of the proceeding. As the only documents before the Panel are in English, the decision will be issued in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
The disputed domain name <lygrundfos.com> is made up of the registered trademark GRUNDFOS combined with the letters "ly" which appear to be an abbreviation of "luoyang" (where Dahua Pumps is based) and the Top-Level Domain (TLD) ".com". The disputed domain incorporates the registered trademark GRUNDFOS in full and is, accordingly, confusingly similar to the trademark. The Panel does not need to consider the issue of whether GRUNDFOS is a well-known mark.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Section 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish it has rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
However, the circumstances of this case do require the Panel to consider paragraph 4(c)(i) of the Policy. The website under the disputed domain name is being used by a company that claims to be a distributor of the Complainant. There has been no attempt to hide the identity of the registrant of the disputed domain name or of Dahua Pumps who is using the disputed domain name. Full address and contact details have been given.
In principle, a reseller or distributor can make use of a trademark to resell or promote for resale genuine trademarked goods by reference to the mark. A seller can make use of a trademark in a domain name to sell genuine products.
However, in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data"), the panel in that case held that to be "bona fide" within the meaning paragraph 4(c)(i) of the Policy, the offering should meet the following requirements:
- The respondent must actually be offering the goods or services at issue;
- The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- The site must accurately disclose the registrant's relationship with the trademark owners; it may not, for example, false suggest that it is the trademark owner, or that the website is the official site; and
- The respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case the Respondent does not meet, at least, the second requirement set out above. The website under the disputed domain name states specifically the Respondent's company is a distributor of a number of brands. It is not clear if the products currently on offer (faucets) are those of the Complainant or those of another company. (The Complainant did not claim to be a manufacturer of faucets. It did not however state that it did not make them). However, as the website specifically states that Dahua Pumps is a distributor of other brands and it is not clear which brands are in fact being promoted on the website, the Respondent does not fall within the second requirement of Oki Data.
The Panel, therefore, finds the Respondent is not making bona fide use of the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Given its findings in relation to rights or legitimate interests, the Panel has no hesitation in finding that the disputed domain name <lygrundfos.com> was registered in bad faith and is being used in bad faith.
This case clearly falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The use of GRUNDFOS as part of the disputed domain name is clearly designed to attract consumers to the website.
The third element of paragraph 4(a) of the Policy is therefore satisfied.
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 <lygrundfos.com> be transferred to the Complainant.
Date: April 17, 2018