WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Grundfos A/S v. Discount Heating
Case No. D2003-0343
1. The Parties
The Complainant is Grundfos A/S, of Bjerringbro, Denmark, represented by Chas. Hude A/S of Denmark.
The Respondent is Discount Heating, of Plymouth, Devon, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 2, 2003 (email) and May 3, 2003 (hard copy). On May 8, 2003, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On May 8, 2003, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on June 4, 2003.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 10, 2003. 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.
The case was originally filed on February 26, 2003, as WIPO Case No. D2003-0147. The sole panelist, Mr. Pravin Anand, suspended the case as the parties wished to negotiate a settlement. Upon expiration of the suspension period no further request had been made for an extension. Mr. Anand therefore terminated the case. The Complainant then re-filed the Complaint (WIPO Case No. D2003-0343, which is the present case). As no decision was cast in WIPO Case No. D2003-0147 by the competent panel, the present case is not typical of a re-filed complaint, where complainant generally seeks a different decision based on new facts (cf. Creo Products Inc v. Website in Development, WIPO Cases No. D2000-0160 and D2000-1490 ). Therefore this Panel has no reservation to decide WIPO Case No. D2003-0343 on the basis of the statements and documents submitted as requested by the Rules, paragraph 15(a).
4. Factual Background
A. Complainant
The Complainant, Grundfos A/S, is a Danish production company belonging to one of the biggest pump producing groups in the world (Grundfos Group), with an annual production of 10 million pump units. The Complainant is owner of numerous trademark registrations worldwide, including the GRUNDFOS trademark No. 856108 registered in the United Kingdom with a priority of 1963. This trademark is registered for goods and services in classes 07, 09 and 11, including pumps in class 07 and self-regulating hydraulic pumps in class 09. Other GRUNDFOS trademarks are owned by Grundfos GmbH in Germany. Licensing agreements have been concluded, allowing the use of all of the GRUNDFOS trademarks (the "Trademarks") by companies of the Grundfos Group, which has developed, produced, marketed and sold pumps under the name GRUNDFOS for more than 30 years.
The Complainant has a subsidiary in the UK, namely the company GRUNDFOS PUMPS LTD South, in Leightin Buzzard, Bedfordshire and has been doing business in the UK for many years.
B. Respondent
The Respondent is the UK's leading online supplier of plumbing and heating materials and can be found at "". He is selling Complainant's products as well as third parties' products under this domain name.
5. Parties� Contentions
A. Complainant
The Complainant contends that each of the three elements specified in the Policy, paragraph 4(a), are given in the present case, i.e.
(i) the Domain Name is confusingly similar to the trademarks in which the Complainant has rights;
- The Trademarks owned by the Complainant are identical to the first eight letters in the Domain Name . The additional word "pumps" only describes the products for which the Complainant is using the Trademarks;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name:
- The Respondent is a distributor of the Complainant's products. There is no other relation between the Complainant and the Respondent and the Respondent has no registered rights in the word GRUNDFOS;
- the intention of the Respondent to use the Domain Name in connection with the marketing of Complainant's products has not been proven;
(iii) the Domain Name was registered and is being used by the Respondent in bad faith:
- The Respondent was aware of Complainant's right at the time of registration as he is a distributor of the Complainant and informed the Complainant that he registered the Domain Name to use it as a marketing tool;
- the Domain Name was only registered in order to prevent the Complainant from using and registering the Domain Name and to make profit which exceeds the out of pocket expenses for obtaining a registration of the Domain Name;
- the usage of the Domain Name in connection with Respondent's business will lead to confusion of the customers because the Respondent distributes a wide range of products including products manufactured by competitors of the Complainant.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Under the Policy, paragraph 4(a) the Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name is . The distinctive part of the Domain Name is . This part is identical to the Trademarks of the Complainant. The suffix "pumps" is a generic term, referring to the products of the Complainant and is therefore merely descriptive. The suffix only indicates that the Domain Name is registered as a .com gTLD. As a result, the whole Domain Name is confusingly similar to the Complainant's Trademarks. The Complainant has therefore satisfied the requirements of the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Policy, paragraph 4(c) sets out three illustrative circumstances as examples, which, if proved by the Respondent, shall demonstrate his rights to or legitimate interests in the Domain Names for purposes under the Policy, paragraph 4(a)(ii), i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent 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) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademarks or service marks at issue.
The Respondent's business cannot rely on its (business) name and the Respondent does not own trademark rights in GRUNDFOS.
As the Respondent is neither commonly known by the Domain Name nor contends to make a legitimate noncommercial or fair use of the Domain Name, rights or legitimate interests could be established by the Respondent only under the Policy, paragraphs 4(a)(ii) and (c)(i), if the Domain Name or a name corresponding to the Domain Name had been used (or if preparations to use the Domain Name could be demonstrated) in connection with a bona fide offering of goods and services before any notice of the dispute.
Such bona fide offering of goods and services could be based on the right to advertise the products of the Complainant distributed by the Respondent. The Complainant cannot object to the resale of goods that he previously placed on the market bearing the mark due to the exhaustion of his rights. However, to rely on this argumentation, the Respondent must show usage or demonstrable preparations relating to a future usage of the Domain Name. The Respondent did not use the Domain Name in any way prior to receiving notice of the dispute. According to the correspondence concerning an amicable settlement between the Parties, the Respondent merely announces that the Domain Name should be used to promote Grundfos products on his website. The Panel is not in possession of any information on or evidence of demonstrable preparations concerning the use of the Domain Name in connection with a bona fide offering of goods and services.
The Panel can therefore see no rights of the Respondent to or legitimate interests in the Domain Name and finds that the Complainant has also satisfied the requirements of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b) sets out four illustrative circumstances, which for purposes of the Policy, paragraph 4(a)(iii) shall be evidence of the registration and use of the Domain Name in bad faith, including
(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 the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the Domain Name.
As the Respondent is a distributor of the Complainant he was aware and had positive knowledge of the rights of the Complainant in the Trademarks, in particular in the UK, where the Respondent operates. Therefore, the registration of the Domain Name was in bad faith.
The Complainant has provided the Panel with email correspondence between the Parties (Annex 6 to the Complaint), where the Respondent offered to sell the Domain Name for the amount of GBP 8,000.00, a price which the Panel finds is substantially in excess of the documented out-of-pocket costs directly related to the Domain Name, no such costs having been established by Respondent. This offer for sale is per se evidence of bad faith usage. Moreover, when the Respondent realized that the Complainant was not willing to pay this prize for the Domain Name, the Respondent asked for rebates when purchasing the Complainant's products in exchange for abandoning the Domain Name free of charge to the Complainant. This behavior is further evidence of bad faith use because the Respondent suggested giving up the Domain Name to the Complainant for benefit in money's worth.
The only question is whether the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant. The Panel finds that the offers from the Respondent to sell the Domain Name to the Complainant at a considerable price in connection with the fact, that the Respondent did not deny the Complainant's contentions is evidence that the Respondent has registered the Domain Name primarily for the purpose of selling it to the Complainant.
The Panel concludes that the Domain Name has been registered and used in bad faith, which violates the Policy, paragraph 4(a)(iii).
7. Decision
For all the foregoing reasons, in accordance with the Policy, paragraph 4(i) and the Rules, paragraph 15, the Panel orders that the domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: July 23, 2003
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