WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Grundfos A/S v. Bridge Port Enterprises Limited Case No. D2008-1263 1. The Parties
1.1 The Complainant is Grundfos A/S, of Bjerringbro, Denmark, represented by Delacour Law Firm, Denmark.
1.2 The Respondent is Bridge Port Enterprises Limited, of Bridge Port, St Johns, Antigua and Barbuda. 2. The Domain Name and Registrar
2.1 The disputed domain name (the “Domain Name”) is registered with Bottle Domains (the “Registrar”). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2008. In early August 2008 the WhoIs record for the Domain Name recorded that the Domain Name was registered in the name of Whois Privacy Protection Services Inc and eNom Inc (“eNom”) was recorded as the registrar for the Domain Name. However, by the date of the Complaint the WhoIs record had changed. Details for the registrant were not displayed but there was still an entry for the Domain Name and eNom remained recorded as the Registrar. Accordingly, on August 19, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name.
3.2 Later that day eNom responded by email that the domain name had been deleted on August 5, 2008. The Center in an email to eNom on August 21, 2008 noted that the WhoIs record for the Domain Name did not expire until May 29, 2009. It therefore asked eNom to clarify the position. eNom responded by the return and repeated its statement that the Domain Name had been deleted on August 5, 2008 and added that on that date it had entered, and currently remained in, “Redemption” status. eNom stated that this status would last for 30 days from the date of the deletion request (i.e. until September 4, 2008), at which point the Domain Name would be placed in “Pending Delete” status for a further 5 days. Only when these 5 days were over (i.e. on September 9, 2008) would the Domain Name become available for registration by the public.
3.3 On September 11, 2008, the Complaint's lawyers sent an email to the Center informing it of the Complainant's belief that on September 5, 2008 the registrant of the Domain Name had decided to renew the registration. It, therefore, requested that the Complaint once again proceed. By this stage the registrar for the Domain Name was not eNom but the current Registrar, Bottle Domains. Accordingly, on September 15 2008 the Center sent Bottle Domains, a verification request in relation to the Domain Name. As at September 17, 2008 Bottle Domains had not responded to that request and the Center sent a further email to it asking for the Registrar's urgent response. By September 23, 2008 Bottle Domains had still not replied and the Center sent yet a further email asking for a response.
3.4 Finally on September 24, 2008 the Operations Manager of Australian Style Group Pty Ltd responded on behalf of the Registrar. He did not prove the necessary verification information but stated:
“We are performing an investigation into the registration, and we will have a report available to you within 24 hours!”
3.5 The following day the Registrar sent the Center a further email. It stated as follows:
“We have identified this name was registered with one of our resellers, SnapNames.
SnapNames has erroneously submitted the registration with Bottle Domains listed as the registrant contact.
We are contacting the reseller, and will update the registrant details to the correct information as soon as possible”
3.6 As at October 1, 2008, no further explanation had been forthcoming from the Registrar but the Center noted that the WhoIs details for the Domain Name had changed so as to identify the Respondent, Bridge Port Enterprises Limited, as the registrant. The Center, therefore, sought a response to its verification email. A further email in similar terms was sent on October 3, 2008. Still no response was forthcoming. Accordingly, on October 7, 2008 the Center sent yet another email to the Registrar asking once again that the information sought be provided. It stated that unless it received a response by October 8, 2008, the Center would proceed with the proceedings on the basis of the information that then appeared in the WhoIs database for the Domain Name.
3.7 On October 8, 2008, the Operations Manager of Australian Style Group Pty Ltd on behalf of the Registrar responded to the Center's email. He referred to his earlier emails of September 24 and 25 2008, and then finally provided a substantive response to the Center's verification request. He confirmed that Bridge Port Enterprises Limited was the registrant, describing its “contact details as per who is”.
3.8 On October 8, 2008, the Center informed the Complainant of the registrant information provided by the Registrar. Given that both the registrar and the registrant were no longer as set out in the Complaint, it invited the Complainant to amend its Complaint accordingly. The Complainant forwarded an Amended Complaint to the Center on October 13, 2008.
3.9 The Center verified that the Complaint as amended 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”).
3.10 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 October 14, 2008. In accordance with the paragraph 5(a) of the Rules, the due date for Response was November 3, 2008.
3.11 On October 31, 2008, the Center received an email from “Barry Ridge” using the email address bridgeportltd@. The email read in its entirety “we will release the domain”. The Center forwarded this email the same day to the Complaint and the Complainant was given the option of suspending the proceedings with a view to transferring the Domain Name by agreement. The Complainant did not make any such request.
3.12 On November 4, 2008, the Center, having received no formal Response, proceeded to issue a notification of Respondent default.
3.13 On November 5, 2008, the Center received a further email from “Mr Ridge”. This time the email read:
“Bridgeport Enterprise will agree to release the domain to the complainant. We did send a response but the mail was returned”
3.14 On November 11, 2008, the Center sent an email in response to Mr. Ridge. It stated that the only correspondence it had received from the Respondent was his two emails of October 31 and November 5, 2008. It requested that if he had sent any communication in addition to these two emails, he explain how these were sent, the address used, and the date sent. It also asked that he forward the “returned mail” to the Center. Mr Ridge did not respond.
3.15 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 14, 2008. 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
4.1 The Complainant is a company established in Denmark and is part of the Grundfos Group. The Group was established in 1945. It is one of world's largest manufacturers of high technology pumps and pump systems and in 2007 its turnover was in excess of €2.2 billion.
4.2 The Complainant trades under the GRUNDFOS mark, which is registered as a word trade mark in various countries around the world. These include United States registered trade mark no. 782042 (registered December 22, 1964).
4.3 The Respondent uses the name Bridge Port Enterprises Limited and in the WhoIs details for the Domain Name, gives as its address and contact details a PO Box in Antigua and Barbuda i.e. Bridge Port Box 1491 St. John, Antigua and Barbuda. However, the contact telephone number provided (i.e. +1.40312263372) does not incorporate an Antiguan and Barbudan area code. Instead, it would appear to be a Canadian telephone number.
4.4 The WhoIs details for the Domain Name record its registration date as September 11, 2008. Earlier WhoIs print outs for the Domain Name would suggest that this is a registration of a domain name that had previously been registered on May 29, 2007.
4.5 At all relevant times the Domain Name has been used to resolve to a web site that bears all the hallmarks of having been created by a domain name parking service. On August 1, 2008 the web site displayed the heading “Welcome to ”, under which were a series of sponsored listings relating to pumps and plumbing products and services. As at October 8, 2008, the web site displayed the heading “G What you need, when you need it” below which is a list of “related searches” none of which appear to be pump related. As at the date of this decision, the domain name parking page continues to operate but the format has changed slightly again. It now displays “related searches” which appear to be pump related. 5. Parties' Contentions A. Complainant
5.1 The Complainant contends that its GRUNFROS trade mark is “very well known”, referring to the statement of the panel to the effect in Grundfos A/S v. Orion WebWIPO Case No. D2005-0618. It claims that the Domain Name represents its trade mark with the addition of the letter “r” and this addition is said to be insufficient to avoid a likelihood of confusion between the Domain Name and its trade mark.
5.2 The Complainant contends that the Respondent has been using the Domain Name to profit from the sale of sponsored links and that it has been attracting the likelihood of confusion between the Complainant's trade mark and the Domain Name to draw internet users to the web site on which these sponsored links are to be found. It also provides evidence that the sole business of the Respondent is dealing in domain names. In the circumstances, it contends that the Complainant has no right or legitimate interest within the terms of the Policy.
5.3 Further, the Respondent's activities are said to constitute bad faith registration and use within the scope of paragraph 4(b)(iv) of the Policy B. Respondent
5.4 The Respondent did not file a Response to the Complainant's contentions. 6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
6.4 The Panel will consider each of these requirements in turn. However before it does so it is convenient first to add some comments on a number of aspects of the procedural history of this case i.e. (a) the initial deletion of the domain name; (b) the delays of the Registrar in responding to the Complainant's request; and (c) the Respondent's offer of transfer of the domain name. A. The Initial Deletion of the Domain Name
6.5 As has already been recorded, at the time that the Complaint was initially filed in these proceedings, the registrar of the Domain Name was eNom. In response to the Center's verification email eNom stated that the Domain Name had been “deleted” by the registrant. However, the Domain Name was still recorded in the relevant WhoIs database as registered (albeit with the status “redemptionPeriod”). It was not at that time possible for either the Complainant or any third party to register the Domain Name.
6.6 It would appear that the then registrant of the Domain Name had instructed eNom to delete the Domain Name on August 5, 2008. However, when the Center made its verification request on August 19, 2008, eNom had not completed the deletion process. Rather than delete the Domain Name immediately eNom had (as the status “redemptionPeriod” in the WhoIs database indicated) changed its status to being subject to redemption. Essentially, what this meant was that the registrant had a limited period of time (in this case 30 days) in which to change its mind and “re-register” the Domain Name. After that (as eNom's email of August 21, 2008 confirmed) the Domain Name status would have gone into “pending Delete status” for five days. Only after this five-day period would the Domain Name have been available for registration by the public at large.
6.7 The issue of domain names expiry and deletion is specifically addressed in paragraph 3.7.5 of the ICANN Registrar Accreditation Agreement (“RAA”), as modified by the ICANN Expired Domain Deletion Policy, between ICANN and registrars. It provides that in the absence of “extenuating circumstances” the domain name must be deleted within 45 days of “either the registrar or the registrant terminating a registration agreement” (paragraph 3.7.5.3). However, the agreement also anticipates that it is possible that the domain name due for deletion may be subject to UDRP proceedings. UDRP proceedings are expressly included in the list of “extenuating circumstances” set out at paragraph 3.7.5.1. In other words, where there are UDRP proceedings the registrar is not obliged to delete the domain name.
6.8 This still leaves open the possibility that a registrar even though not obliged to delete the domain name, may positively wish to do so. However, provision is made in this respect by paragraph 3.7.5.7 of the RAA. This states that:
“In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted”
6.9 In short, what this clause does is give a complainant the chance to restore or renew the domain name on the same terms that the registrant could have done so. In this way the complainant can ensure that the domain name does not drop off the register and its proceedings under the Policy are not frustrated.
6.10 Clause 3.7.5 is primarily directed to the situation where a domain name expires during the course of UDRP proceedings, but the Panel sees no reason why in the ordinary course of events these provisions would not also apply more generally where a registrant seeks to delete a domain name prior to its expiry date. Paragraph 3.7.5.3 expressly contemplates a registrant pro actively terminating its agreement with the registrar. Further, if ICANN considered that expiry of a domain name ought not to frustrate the operation of the Policy, it seems to the Panel that there is even less reason why the positive action of a registrant seeking deletion of a domain name (for example, in possible anticipation of proceedings under the Policy) should be allowed to do so.
6.11 Therefore, the obvious question that therefore arises is why in this case the Complainant was not offered the option of “renewing or restoring” the Domain Name on the same terms as the original registrant. It may be that had the Complainant been offered the choice it would not have decided to take up such offer and would have been content to allow the Domain Name to proceed to be removal from the register, albeit with the inherent risk that it might subsequently be re-registered either by the same registrant or a third party. However, should not the Complainant have been offered this choice? If it had been and it had taken up this offer, these proceedings would likely have proceeded to a conclusion significantly earlier than they have now done so.
6.12 It seems that one possible answer to that question, and the one that appears inherent in eNom's responses to the Center, is that “deletion” takes place at the time that it receives an instruction from a registrant to delete a domain name (or perhaps when it first acts on that instruction). And on this interpretation the Domain Name was indeed “deleted” prior to the filing of any Complainant and therefore clause 3.7.5 was not engaged. However, the Panel is not convinced that this interpretation is correct. There is no definition of the terms “delete” or “deletion” in the ICANN RAA. Nevertheless, it seems to the Panel that the most sensible meaning of that term is that it is at least the point at which the WhoIs register is cleared of any entry in relation to any registration for the domain name and possibly when the domain name becomes open to registration by a member of the public.
6.13 First, this seems to be the meaning of deletion that is most in accordance with the ordinary English meaning of this term. Indeed, it is noteworthy that even eNom uses “delete” in this sense, describing a domain name that is in the last five days of its life on the register as being in “pending Delete status”.
6.14 Second, this is the interpretation of the term “delete” that appears to make most sense when clause 3.7.5. is read as a whole. Clause 3.7.5.3 contemplates a domain name being “deleted” within 45 days of a registrant terminating the RAA between the registrant and the registrar. Is not a request for deletion precisely a request for termination? If it were not and deletion instead occurred as soon as the request was received, this would open up the prospect of a registrar being able to hold on to a “deleted” domain name indefinitely. In such a case the registrar would not breach the 45 day rule because the domain name would have already been “deleted” and yet the domain name might never again be available for re-registration. This cannot be right.
6.15 Similarly, in cases where the domain name has passed its expiry date, the deletion date is clearly contemplated as potentially occurring at some subsequent date. For example, clause 3.7.5.4 talks about a Registrant having to give notice to registrants of its deletion and expiry policy “including the expected time at which a non-renewed domain name would be deleted relative to the domain's expiration date”. Given that a registrar may operate a grace period between expiry and deletion in which the domain name can be redeemed, this makes perfect sense. Suppose (as eNom appears to do) a registrar also operates a redemption or grace period after receiving a request for deletion. The redemption process is similar in each case and the practical steps taken by the registrar once that grace period is over are essentially the same. It seems a very odd state of affairs if what are essentially the same practical steps constitute “deletion” if they occur at the end of a post expiry grace period, but are not deletion if they instead take place after a post deletion request grace period.
6.16 Accordingly, on this assessment the Complainant would have been entitled to take advantage of the procedure set out in clause 3.7.5 of the ICANN RAA1. A WhoIs record (which at least identified the relevant registrar, if not the actual registrant) was still maintained for the Domain Name, and according to that record the Domain Name was still two weeks away from the end of the redemption period. Similarly, on this view whilst it was perfectly right and proper for eNom to have informed the Center that the Domain Name was subject to a deletion request and had been placed in redemption status, it should have still have provided an answer to the questions set out in the Center's verification request.
6.17 The Panel does not seek to criticise eNom for its actions in this case. It would seem that cases such as this have been rare and the Panel is not aware of previous UDRP cases in which the meaning of deletion has been expressly considered by a panel. There is certainly no suggestion in this case that eNom was attempting to obstruct the operation of the Policy. Also the Complainant did not at the time raise the paragraph 3.7.5. point with either the Center or eNom.
6.18 The Panel further recognises that its role is primarily one of interpreting and conducting proceedings under the Policy and Rules. Its interpretation of the ICANN RAA does not bind a registrar. eNom has also not been offered the opportunity to put forward its views on any of the issues that the Panel has addressed. Nevertheless, the Panel believes it is entitled to comment on issues of implementation and operation of the Policy that have directly impacted on a case before it. This is what the Panel has sought to do in this case. In sum, this Panel is of the view that, where a domain name that is the subject of a UDRP complaint is within the redemption period at the time the complaint is filed with a provider, the complainant would be reasonably within its rights to seek to have the registrar renew that domain name pursuant to clause 3.7.5 of the ICANN RAA. B Activities of the Current Registrar
6.19 As has already been explained, whilst the Domain Name appears to have proceeded to deletion on September 9, 2008, the Domain Name was re-registered only two days later and the proceedings re-commenced. A new verification request was sent to the new registrar for the Domain Name, i.e. Bottle Domains on September 15, 2008. It took 9 days and several days for the Registrar to acknowledge that request. Even then it did not provide the information requested, but explained that it did not know who was the registrant of the Domain Name.
6.20 No explanation was ever offered by Bottle Domains for that initial delay. As to the inability of the Registrar to substantively respond to the Center's request, the Registrar stated that it did not yet have the true registration details because of an error on the part of SnapNames, one of the Registrar's domain name resellers. That may be so, but the obligations under the Policy are those of the Registrar. It is no excuse for a failure to comply with those obligations that the Registrar has passed control of part of the register to a “reseller”.
6.21 The Registrar then proceeded to ignore further emails from the Center only finally providing a substantive response to the Center's initial request on October 8, 2008. The tone of that email was not apologetic. Indeed, the stance of the Registrar appeared to be that its emails of September 24 and 25 constituted an adequate response to the Center's initial request, in circumstances where they were clearly not.
6.22 It is not acceptable for a registrar to take over three weeks to respond to a verification request. It results in an unnecessary delay in the progress of proceedings in circumstances where a domain name may well be continuing to be used in an abusive manner. That is not fair to a complainant and risks bringing the Policy into disrepute. C. Offer of Transfer
6.23 In this case, the Respondent offered to release the Domain Name to the Complainant. The Complainant did not take the Respondent up on this offer.
6.24 In Sanofi-aventis v. Standard Tactics LLCWIPO Case No. D2007-1909, this Panel noted that a procedure has developed to allow domain names to be transferred to a complainant where the respondent agrees to that course of action after proceedings have been commenced under the Policy without the need to appoint a panel or to discontinue proceedings. This is essentially what was offered in this case by the Center in its email of October 31, 2008. But a Complainant should not be criticised if it does not take advantage of that procedure. As this Panel stated in the Sanofi case:
“5.10 However, the fact that such a procedure exists does not mean that a complainant is forced to adopt it. This is so even where, as here, it would appear that the respondent agrees to transfer the domain name without payment or the imposition of any other term or condition. There are many reasons why a complainant may not want to go down this route. It may want public vindication of its position so as to discourage others from registering domain names that incorporate its marks. It may otherwise be to its advantage for a particular respondent to be labelled as a cybersquatter. As a matter of principle, a complainant may simply refuse to do a deal, no matter how favourable, with what it considers to be a cybersquatter.
5.11 Further, there is a wider interest in the activities of those that have registered domain names contrary to the terms of the Policy, becoming publicly known. The relevant facts may be relevant to future proceedings involving different complainants (see, for example, the comments of the panel to this effect in Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211). In this respect, the Panel also notes that it has now become common practice among some cybersquatters to offer to transfer a domain name without payment whenever proceedings are commenced against it under the Policy. The respondent knows that the cost associated with the commencement of proceedings may of themselves dissuade the rights holder from commencing proceedings. It also knows that if a rights holder does commence proceedings, its offer, which carries with it the prospect of the domain name being quickly transferred, the return of some fees and the avoidance of the risks inherent in the matter proceeding to a panel, may prove commercially irresistible to many complainants. In this way the respondent is able to maintain a “clean record” so far as the rest of the world is concerned.
5.12 The Panel does not know the particular motivations of the Complainant in this case, nor does it suggest that the offer of the Respondent in this case was influenced by the sort of considerations that have been described. However, the Complainant is in this case entitled to require this Panel to consider the substance of its Complaint and this is what this Panel will do. If and insofar as the comments of the panel in Laerdal Medical v. V. Lee,WIPO Case No. D2007-1672, should be understood as suggesting that in the case such as the one currently before the Panel, a complainant should accept the offer made by the respondent, then for the reasons already given, the Panel respectfully disagrees.”
6.25 Sanofi-aventis v. Standard Tactics LLC was a case where the complainant had positively asked for a reasoned decision on the merits. This is not the case here. As a footnote in the Sanofi-aventis v. Standard Tactics LLC decision records, there are many cases where a respondent in which the complainant has stayed silent in response to such an offer from a complainant and in such circumstances the approach of different panels have been different. In particular it records:
“Some panels have deemed this to be grounds to order transfer by consent without considering the merits of the case. Other panels have considered on the facts of their cases that the respondent essentially conceded the complainant's claims and made an order on that basis. Some panels have thought it appropriate to consider the substance of the complaint. These three different approaches are, for example, identified in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132 and the panel in that case decided that an order for transfer could be made without consideration of the merits of the case. More recent cases (for example, Brownells,Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211 and Ticketmaster Corporation v. Global Access,WIPO Case No. D2007-1921) have suggested that in such a case the panel has a discretion as to whether or not to consider the complaint (and in both Brownells and Ticketmaster the panels decided that it was appropriate to do so).”
6.26 It is not necessary in this case to consider which of these approaches is correct. The fact is that regardless of the existence and exact scope of a panel's discretion in such a case, this Panel should consider the substance of the Complainant's case. The Panel believes that the facts surrounding the Respondent's registration and use of the Domain Name are such that public policy reasons for a full consideration of the Complainant's case and the Respondent's actions are compelling. D. Identical or Confusingly Similar
6.27 It is clear that the Complainant is the owner of a registered trade mark comprising the word “GRUNDFOS”. The Panel also accepts that apart from the “.com” TLD” the Domain Name can only be sensibly understood as the Complainant's GRUNDFOS mark with the addition of a letter “r”. There is no doubt that the Domain Name is confusingly similar to the Complainant's mark.
6.28 The Complainant has made out the requirements of paragraph 4(a)(i) of the Policy. E. Rights or Legitimate Interests
6.29 The Panel accepts the Complainant's claims that the Respondent has never engaged in a substantial business activity under the “Grundfros” name or anything similar. Accordingly, it has not as a consequence of such activity established a right or legitimate interest in this term.
6.30 The only activity in which the Respondent appears to have been engaged is the operation of a web page from the Domain Name. As has already been described, this web sites show the classic hallmarks of a parking site. How these sorts of site operate is described in greater detail in the context of bad faith later on in this decision. In the view of the Panel there is no real doubt that in this case the Respondent has registered this Domain Name with a view to earning a share of the click through revenue generated by the domain name parking page in question.
6.31 It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a respondent intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a complainant's rights and reputation in that term, then it may have a legitimate interest in the domain name (see paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the domain name in question was chosen because of the similarity to a name in which a complainant has an interest and in order to capitalise or otherwise take advantage of that similarity, then such registration and use does not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267).
6.32 Essentially, therefore, in a case such as this the assessment boils down to the questions: did the Respondent register the Domain Name with the Complainants' marks in mind and has it deliberately used it to take advantage of the reputation of those marks? These are also precisely the questions that have to be addressed in assessing the question of bad faith registration and use and a separate assessment of the question of rights and legitimate interests adds very little.
6.33 For the reasons that are explained in greater detail under the heading of bad faith, the Panel concludes that the unequivocal answer to both questions is yes. In the circumstances, the Panel finds that the Respondent has no right or legitimate interest in the Domain Name and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy. F. Registered and Used in Bad Faith
6.34 The Panel has little difficulty in concluding in this case that the Domain Name has been registered and used in bad faith.
6.35 First, there is the use of the Domain Name in connection with a “domain name parking” or “pay per click” service. It is now well-known how these sorts of page operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click-through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see for example Owens Corning v. NA,WIPO Case No. D2007-1143).
6.36 In this case the material appended to the Complaint suggests that in this case the link to the sponsored searches is now indirect. Either sponsored links are produced when the Internet user undertakes a search in the search box provided on the page or chooses one of the “Related Searches” that are displayed.
6.37 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant chose the domain name in question because of its similarity to a mark or name of another person in the hope and expectation that that similarity will result in an increased number of Internet users being drawn to that page (see for example Express Scripts, Inc. v. Windgather Investments Ltd supra.).
6.38 In this case the Complainant has put forward evidence of the extensive world wide activities of the Grundfos Group (including that in North America) and the substantial reputation of the GRUNDFOS mark. Further the term “grundfos” (at least in the English language) is a distinctive one. It has no sensible meaning other than as the Complainant's trading name and trade mark. The addition of the letter “r” in the Domain Name merely suggests a misspelling of the Complainant's mark.
6.39 The only sensible explanation of events is that when the Respondent registered the Domain Name on September 11, 20082, it did so will full knowledge of the Complainant's mark and with a view to using the similarity between that mark and the Domain Name to draw Internet users to a domain name parking page for financial gain.
6.40 The Respondent has not sought to excuse or explain its activities3. It has simply agreed to “release” the Domain Name. The Respondent's actions in this case suggest a cynical disregard for the trade mark rights of others for financial gain. The Complainant has brought forward evidence that the Respondent is the owner of in excess of 3,000 domain names and the Panel cannot help but suspect that the Respondent was willing to transfer the Domain Name in this case because of the reasons described at paragraph 5.11 of the Sanofi case set out above.
6.41 The Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: November 25, 2008
1 There is a further complication here in that clause 3.7.5.7 talks about the Domain Name “being subject to a UDRP dispute” and it is not entirely clear what that means. There are potential echoes here of the debate that has taken place as to when exactly a domain name is “pending” or “commenced” under the Policy (as to which see at paragraph 5.16 of this Panel's decision in Mrs. Eva Padberg v. Eurobox LtdWIPO Case No. D2007-1886 and the various decisions of other panels referred to therein). But in this case even if clause 3.7.5.7 could not apply until the proceedings were formally “commenced” (and the Panel declines to express a view on this issue), in the circumstances of this case it should have made no real difference. The Center put in its verification request to eNom on August 21, 2008 and the Domain Name was only due to be placed into deletion status on September 4, 2008. Therefore, there would in the normal course of things have been more than adequate time for the proceedings to have formally commenced prior to that date had the issues of deletion, movement of the Domain Name to another registrar, and subsequent need for multiple registrar verification requests in order to enable completion of the administrative compliance process not arisen.
2 The Panel takes this to be the registration date notwithstanding the claim in an email by the Complainant's lawyers that the Domain Name was re-registered by the initial registrant of the domain name on September 5, 2008. In any event, what ever the exact date of registration in this case date, the Panel's arguments about registration in bad faith still apply.
3 In light of the Respondent's failure to respond to the Center's email of November 11, 2008, the Panel is wholly unconvinced that the Respondent attempted to file a substantive Response in this case, notwithstanding the contents of its email of November 5, 2008.
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