WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. See PrivacyGuardian.org / Huang Huang
Case No. D2018-1099
1. The Parties
The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Huang Huang of Hong Kong, China.
2. The Domain Name and Registrar
The disputed domain name <grundfosreplacementmap.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2018, the Registrar 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 the Complainant on May 28, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 1, 2018.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2018.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on July 3, 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 part of the Grundfos Group, one of the largest and leading manufacturers of pumps in the world, based in Denmark and established in 1945.
The Complainant owns numerous registrations for the trademark GRUNDFOS all over the world, including GRUNDFOS, Danish Trademark No. VR 1946 01968, registered on December 14, 1946.
The Complainant also operates and promotes its products under several websites, including at the domain name <grundfos.com>, registered in 1995.
The disputed domain name was registered by the Respondent on February 13, 2018.
The Panel accessed the disputed domain name on July 13, 2018, at which time the disputed domain name was linked to a website containing pornographic images and advertisement of pornographic products and services.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The trademark GRUNDFOS is undisputedly well-known due to its extensive use and the marketing investments made by the Complainant. The Complainant is very keen on protecting its trademark against any kind of infringement.
(ii) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The disputed domain name is structurally and phonetically identical and thereby deceptively similar to the Complainant’s trademark GRUNDFOS. The disputed domain name integrates the trademark GRUNDFOS to the suffix “replacementmap” and to the gTLD “.com”. It is not evident for the Internet users that the disputed domain name is not linked to the Complainant. The word “grundfos” is clearly recognizable within the disputed domain name and the website to which it is linked does not refute the confusingly similarity. The Respondent intentionally wants to mislead Internet users to believe that the website at the disputed domain name is associated with the Complainant.
(iii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 17, article 6 of the WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks does not require the Complainant to prove that the Respondent has no legitimate interest in the registration of a domain name that encompasses a well-known trademark such as GRUNDFOS. The Respondent is not an authorized dealer, reseller or repairer, and the Complainant and the Respondent are not cooperating in any way. In addition, the Respondent is not sponsored by or affiliated with the Complainant and no permission to use the trademark GRUNDFOS was given to the Respondent. The disputed domain name appears to be used to damage the Complainants reputation since the website linked to it shows pornographic images and promotes pornographic products and services. Such tarnishing use is not consistent with any legitimate interest. The Respondent is falsely identifying himself as the Complainant’s business partner in the United States.
(iv) The disputed domain name was registered and is being used in bad faith. It is impossible that the Respondent could not have realized that the mark GRUNDFOS is a registered and well-known trademark. Anyone making unauthorized use of a domain name incorporating the GRUNDFOS trademark would be improperly trading on the Complainant’s rights. The offering of pornographic pictures, products and services at the website linked to the disputed domain name tarnishes the Complainants trademark and is evidence of registration and use in bad faith. The purpose of the registration of the disputed domain name was clearly to profit on its future offer for sale and/or to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website at the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “grundfos” is a term directly connected with the Complainant.
Exhibit 13 to the Complaint shows numerous registration of the GRUNDFOS trademark obtained by the Complainant all over the world, registered as long ago as in 1946.
The trademark GRUNDFOS is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant’s trademark by the addition of the suffix “replacementmap”, as well as of the generic Top-Level Domain (“gTLD”) “.com”.
Previous UDRP panels have consistently found that descriptive additions (such the expression in English language “replacement map”) do not distinguish a domain name, so as to avoid confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S.M.A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD suffix such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed nor authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.
Considering that the disputed domain name is linked to a webpage containing pornographic images and advertising pornographic products and services, as well as that no response nor justification was provided to the Complaint by the Respondent, the Panel finds that there is no evidence to demonstrate the Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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.
When the disputed domain name was registered by the Respondent (in 2018) the trademark GRUNDFOS was already registered by the Complainant in dozens of countries, presenting a well-known status in connection to the Complainant’s pumps.
Therefore, the Panel concludes that it is highly unlikely that the Respondent was not aware of the Complainant’s trademark and that the adoption of the expression “grundfosreplacementmap.com” was a mere coincidence.
Furthermore, the Respondent’s use of the disputed domain name, incorporating the Complainant’s registered trademark, to host a pornographic website and to promote pornographic products and services is in this case evidence of bad faith. See e.g. Ty, Inc., Complainant v. O.Z. Names, Respondent, WIPO Case No. D2000-0370; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022.
Finally, the passive and non-collaborative posture of the Respondent, not at least providing justifications for the use of the Complainant’s trademark certainly cannot be used in benefit of the Respondent in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <grundfosreplacementmap.com> be transferred to the Complainant.
Date: July 17, 2018