WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. Whois Privacy Protection Service, Inc. / Phuong Nguyen
Case No. D2019-0091
1. The Parties
The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Phuong Nguyen of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <grundfosvietnams.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2019. On January 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2019, 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 January 18, 2019 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 January 21, 2019.
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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2019.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on February 22, 2019. 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 which is one of the largest and leading manufacturers of pumps worldwide. It produces more than 16 million pumps a year. As at the end of 2014 it had a net turnover exceeding 4.1 billion US $ with 19,000 employees in more than 80 companies in over 55 countries including Vietnam. The evidence adduced by the Complainant shows that it is expanding steadily throughout the world. Further details are set out in the 2014 annual report (Exhibit 6 to the Complaint).
The Group operates several websites, including a website promoting its products under the domain name <grundfos.com> which in 2014 received over 1,200,000 visitors.
The Complainant first registered the trade mark GRUNDFOSS for pumps in 1946. It, subsequently, in 1967,changed the trading name to GRUNDFOS. The trade mark GRUNDFOS is the subject of 98 registrations all over the world including in the European Union, Denmark and Viet Nam. Copies or transcripts of certificates of registration for these three jurisdictions are exhibited as Exhibits 14, 15 and 16. An overview of the 98 registrations is set out in Exhibit 17. There are also registrations for a wide range of other figurative marks and 3-D marks.
The Complainant has a policy of protecting its trade mark rights. It has filed at least 56 complaints of domain name infringement. Details are set out in Exhibit 19. With one exception panels have ordered that the infringing domain name should be transferred to the Complainant.
The Complainant submits that the mark GRUNDFOS is undoubtedly a well-known trade mark due to the Group’s significant use of the mark worldwide for all products within the relevant industries.
The Respondent is a Vietnamese resident with a website selling the Complainant’s products which is accessed at “www.grundfosvietnams.com”. A transcript of the website is set out at Exhibit 21 to the Complaint.
In the absence of a Response the Panel finds the above evidence adduced by the Complainant to be true and proceeds to determine the Complaint on the basis of that evidence.
5. Parties’ Contentions
1. The Complainant has trade mark rights in the mark GRUNDFOS.
2. The disputed domain name <grundfosvietnams.com>is structurally and phonetically identical and therefore deceptive of the mark GRUNDFOS.
3. There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. In particular the Complainant has not granted any authorization to use the mark.
4. The registration of the disputed domain name was made and is used in bad faith since the Respondent would have been aware of the Complainant’s rights in the well-known trade mark GRUNDFOS and is using it to attract users to its website by creating a likelihood of confusion with the Complainant’s mark and products.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
From the evidence of its trade mark rights set out in Section 4 above the Panel finds that the Complainant has trade mark rights in the mark GRUNDFOS. In particular that it owns a registration for the mark GRUNDFOS in Viet Nam (No. 4-0008869-00) registered on August 9, 1993 which predates the date of registration of the disputed domain name, registered on April 25, 2018.
The disputed domain name consists of the Complainant’s registered trade mark together with the term “vietnams” which save for the use of the plural letter “s” is the name of the country Viet Nam in which the Complainant trades and has trade mark rights. In the Panel’s view the letter “s” does not negate the confusing similarity with GRUNDFOS.
In accordance with precedent the Panel ignores the use of the generic Top -Level Domain (“gTLD”).
The Panel therefore finds that the disputed domain name is confusingly similar to the trade mark GRUNDFOS in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant points out that the Respondent is not an authorized dealer, reseller or repairer of the Complainant’s products even though its website shows pictures of the Complainant’s products and uses the Complainant’s mark GRUNDFOS on the website.
There is nothing on the website to indicate that the parties are not related. It is apparent that the website is intended to mislead users of a connection when none exists. This cannot give rise to rights or legitimate interest within paragraph 4 (c)(i) of the Policy.
The Panel also notes from Exhibit 21 that the Respondent has wrongly spelt the name of the Complainant on the website as “Grundfos Corporataion” rather than “Grundfos Corporation” if ,indeed, “Corporation” is how the Complainant wishes to be described. This is further evidence of no legitimate interest.
Taking into account that there is no evidence to the contrary and the fact that the Complainant has shown prima facie evidence of the absence of any rights or legitimate interests in the disputed domain name by the Respondent the panel finds for the Complainant in respect of this element.
C. Registered and Used in Bad Faith
The Complainant submits that the disputed domain name has been both registered and is being used in bad faith. It submits that the mark GRUNDFOS is a well-known mark registered a long time before the disputed domain name.
On the evidence of trade mark rights the Panel finds that the mark GRUNDFOS is a well-known mark. This was also the finding of the panel in an earlier decision; Grundfos Holding A/S v. Michael McGlothlin, WIPO Case No. D2015-0811. That Panel concluded that the respondent in that case must have appreciated that the mark GRUNDFOS was well-known so that anyone using it on an unauthorized basis would be “improperly trading on the Complainant’s rights”. That is the position here.
The Panel finds that the Respondent’s registration and use of the disputed domain name was to use the disputed domain name for commercial gain by attracting internet users to the website by creating a likelihood of confusion with the Complainant’s mark.
The Panel also takes into account that the Respondent did not reply to the cease and desist letter dated January 4, 2019 or previous emails from the Complainant’s representatives. This is also indicative of bad faith.
The Panel finds in favor of the Complainant in respect of this element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 0f the Rules, the Panel orders that the disputed domain name <grundfosvietnams.com > be transferred to the Complainant
Clive Duncan Thorne
Date: March 4, 2019