WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos Holding A/S v. Super Privacy Service c/o Dynadot
Case No. D2017-0925
1. The Parties
The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Super Privacy Service c/o Dynadot of San Mateo, California, United States of America ("United States").
2. The Domain Name and Registrar
The disputed domain name <grundfos.vip> (the "Domain Name") is registered with Dynadot, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 8, 2017. On May 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 8, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 31, 2017.
The Center appointed Dawn Osborne as the sole panelist in this matter on June 9, 2017. 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, a leading manufacturer of pumps, is the owner of the registered trade mark GRUNDFOS registered, inter alia, in the United States (where the Respondent privacy service is based) in relation to pumps and related goods and services since 1964. The Complainant operates a web site at "www.grundfos.com".
The Domain Name, registered in 2017, has been pointed to pay-per-click ("PPC") commercial links not associated with the Complainant, including competing pumps.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
The Complainant is part of the Grundfos Group established in 1945 and is one of the leading manufacturers of pumps in the world. The GRUNDFOS trade mark is well known and has been used since 1964 (previous registrations for the differently spelled GRUNDFOSS mark dating back to 1946). The GRUNDFOS mark is registered globally including in the United States where the Respondent is based. It operates a web site at "www.grundfos.com".
The Domain Name is confusingly similar to the Complainant's GRUNDFOS trade mark as it is integrates this mark merely combining it with the generic Top-Level Domain ("gTLD") ".vip". This is identical to the Complainant's trade mark for the purposes of the Policy.
The Respondent is an American resident with a web site that contains hyperlinks to other sites. The Complainant has not given consent for this use. The Respondent is not an authorized dealer, reseller or repairer and the Parties are not cooperating in any way. The Respondent has no rights or legitimate interests with respect to the Domain Name.
The Respondent has registered and is using the Domain Name in bad faith. The Complainant registered its trade mark a long time before the Domain Name was registered. The use in relation to hyperlinks is misleading as it is not clear the site attached to the Domain Name is not connected with the Complainant, but it shows the Respondent was aware of the Complainant and its business at the time of registration of the Domain Name.
The Respondent did not reply to a cease-and-desist letter from the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name consists of the Complainant's GRUNDFOS mark (which is registered, inter alia, in the United States since 1964 for pumps) and the gTLD ".vip". ".vip" is a new gTLD which does not serve to distinguish the Domain Name from the GRUNDFOS mark, which is the distinctive component of the Domain Name. As the gTLD ".vip" does not form part of the alleged use of the Complainant's mark and is a necessary component of a Domain Name it is well established by decisions under the Policy that it would not be appropriate to consider such gTLD as part of the comparison for the purposes of confusing similarity between the Complainant's mark and the Domain Name.
Accordingly, the Panel holds that the Domain Name is identical for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact commonly known by the Domain Name.
The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights. The Respondent is using the site attached to the Domain Name for links offering products in competition with those of the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services under paragraph 4(c)(i) of the Policy or a legitimate noncommercial or fair use described in paragraph 4(c)(iii) of the Policy.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registration and Use in Bad Faith
The Complainant also alleges that the Respondent's use of the Domain Name is commercial and it is being used to make profit by competing with the Complainant in a confusing and disruptive manner. In the opinion of the Panel, the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers links to competing goods without any explanation. The use by way of links on the Respondent's web site relating to competing pumps suggests that the Respondent is aware of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site under paragraph 4(b)(iv) of the Policy which is also likely to disrupt the business of the Complainant.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraph 4(b)(iv).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <grundfos.vip> be transferred to the Complainant.
Date: June 21, 2017