WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Grundfos A/S. v. Domain Park Limited Case No. D2009-0090 1. The Parties
Complainant is Grundfos A/S of Bjerringbro, Denmark, represented by Delacour Law Firm, Denmark.
Respondent is Domain Park Limited of Apia, West Samoa. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2009. On January 23, 2009, the Center transmitted by email to R Corp. a request for registrar verification in connection with the domain name at issue. On January 23, 2009, R Corp. transmitted by email to the Center its verification response confirming that 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”), the Rules for the 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 Respondent of the Complaint, and the proceedings commenced on February 3, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2009. The Respondent did not submit any response. Accordingly, the Center notified Respondent's default on February 24, 2009.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 5, 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
The Complainant is the holder, amongst others, of the following trademark registrations:
TRADEMARK REG. No. Class (Int'l) DATE OF REGISTRATION COUNTRY
GRUNDFOS
VA 1967 02157
09
06/12/1967
DENMARK
GRUNDFOS
782,042
23
12/22/1964
United States of America
The disputed domain name was registered on July 20, 2007. 5. Parties' Contentions A. Complainant
The Complainant argues the following: I. Identical or Confusingly Similar
- That the disputed domain name is confusingly similar to Complainant's trademark GRUNDFOS.
- That GRUNDFOS has been considered a well-known trademark in a prior case under the Policy: Grundfos A/S v. Orion Web,WIPO Case No. D2005-0618.
- That the disputed domain name consists solely of Complainant's trademark and the generic top-level domain “.com”.which creates a likelihood of confusion between them, as the dominant and characteristic part of the domain name is the said trademark. II. Rights or Legitimate Interests
- That Respondent registered the disputed domain name to obtain profit by selling sponsored links related to the disputed domain name, thus attracting Internet users to Respondent's website to which the domain name in dispute resolves, by creating confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of said website and the products marketed via such site.
- That Respondent's activities and website linked to the disputed domain name do not constitute evidence supporting that Respondent has any rights or legitimate interests in the disputed domain name.
- That Respondent has not replied to Complainant's cease-and-desist letter.
- That Complainant alleges to have shown prima facie evidence of the absence of any rights or legitimate interests in the domain name by Respondent. III. Bad Faith
- That GRUNDFOS is a well-known trademark.
- That Respondent has registered as its domain name a designation consisting solely of Complainant's trademark and the generic top-level domain “.com”
- That Respondent is using the disputed domain name for commercial gain by attracting Internet users to the website linked to the disputed domain name by creating a likelihood confusion between Complainant's trademark and the disputed domain name with the purpose of making profit by selling sponsored links to manufacturers and distributors of pumps and pump systems originating from manufacturers other than Complainant.
- That Respondent is making commercial use of a designation confusingly similar to Complainant's trademark. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In accordance with the Policy, paragraph 4(a), Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
In the administrative proceeding, Complainant must prove that each of these three elements are present.
As Respondent has failed to submit a Response to the Complaint, the Panel may choose to accept as true all of the reasonable allegations of the Complaint (Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487; Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to Complainant's trademark GRUNDFOS because said domain name entirely incorporates Complainant's mark. The only variations are the addition of the term “us” and the generic top-level domain (gTLD)“.com”.
Numerous WIPO UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example: Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002; and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802.
The addition of generic terms like “us” to a trademark, within a domain name, does not add distinctiveness to said name, and does not alter the fact that such domain name is confusingly similar to the trademark (see Bank of America v. Vox Consult, NAF Claim No.102492; The Bank of Nova Scotia v. Whois Protection,WIPO Case No. D2007-0884; Royal Bank of Canada v. N,WIPO Case No. D2004-0642 and Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel need not take into account the generic top-level domain (gTLD) “.com”, because such gTLD is necessary in a domain name. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300; J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
The Panel finds that the first requirement of the Policy has been met. B. Rights or Legitimate Interests
The following are examples of circumstances where a respondent may have rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.” (Policy, paragraph 4(c)).
Complainant's uncontested evidence shows that Respondent is using the disputed domain name to offer pumps produced by some of Complainant's direct competitors, for pecuniary benefit. (See The Bear Stearns Companies, Inc v. Darryl Pope, WIPO Case No. D2007-0593; COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082; Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Lt., WIPO Case No. D2007-0626; and Sanofi-Aventis v. Montanya Ltd, WIPO Case No. D2006-1079).
Respondent has not been granted any authorization to register the disputed domain name (See Société Air France v. Bing G Glu, WIPO Case No. D2006-0834).
Respondent's website is not making a bona fide offering of genuine goods or services, in relation to Complainant's trademarks. Respondent is diverting traffic to Complainant's competitors, for commercial gain. Such use does not give rise to Respondent having any rights or legitimate interests in respect of the disputed domain name. (See Mr. Olympia, LLC, American Media Operations, Inc., International Federation of BodyBuilders v. Tim Harrington, WIPO Case No. D2005-1287; Société des Hotels Meridien v. Modern Limited Cayman Web Development, WIPO Case No. D2004-0321. See also, Lilly ICOS LLC v. Self, WIPO Case No. D2005-1099; Lilly ICOS LLC v. Cybernet Marketing/Antoine Tardif, WIPO Case No. D2006-1123; and Sanofi-aventis v. Brian Kleiner, Registered Agent,WIPO Case No. D2007-0982).
The evidence before the Panel shows that use of disputed domain name is commercial, and that it constitutes an intent for commercial gain to misleadingly divert consumers (See Hoffmann-La Roche Inc. v. O, WIPO Case No. D2007-1806; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593; COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082; Fat Face Holdings Ltd. v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2007-0626; and Sanofi-aventis v. Montanya ILtd.,WIPO Case No. D2006-1079).
If Respondent's acts of unfair competition continue, they may cause a significant harm, namely damage to Complainant's reputation, and confusion to those consumers buying pumps from Complainant's competitors linked to from Respondent's website, thinking that they are buying pumps related with GRUNDFOS trademark. See Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm”/”JCRo, WIPO Case No. D2000-1308).
The Panel holds that the second requirement of the Policy has been met. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
Complainant has claimed that its trademark GRUNDFOS is well-known. This assertion (and the evidence accompanying it) has not been contested. Registration of a domain name incorporating a well-known trademark may, as it does in these circumstances, constitute bad faith for purposes of paragraph 4(b) of the Policy (see, mutatis mutandis, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330; Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489).
According to the persuasive evidence submitted by Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website, by creating a likelihood of confusion with Complainant's trademark. This conduct falls within the scope of paragraph 4(b)(iv) of the Policy (See Hewlett-Packard Company v. NA, NAF Claim No. 154141; Savin Corporation v. Cal Toner c/o Domain Manager, NAF Claim No. 230934; State Fair of Texas v. G, NAF Claim No. 95288).
The Panel finds that the third element of the Policy has been met. 7. Decision
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 Complainant
Kiyoshi I. Tsuru
Sole Panelist
Dated: March 19, 2009
Full & Egal Universal Law Academy