WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Grundfos A/S v. Equipment Agents Case No. D2009-0906 1. The Parties
The Complainant is Grundfos A/S of Bjerringbro, Denmark, represented by Delacour Dania Law Firm, Denmark.
The Respondent is Equipment Agents of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with MyDomain, Inc. d/b/a NamesDirect. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2009. On July 7, 2009, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain name. On July 30, 2009 MyDomain, Inc. d/b/a NamesDirect 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 21, 2009.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on September 1, 2009. 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 of companies that was established in 1945 and is now wholly owned by the Swiss company Grundfos Holdings AG and ultimately by Paul Due Jensen's Foundation in Denmark. It is one of world's largest manufacturers of high technology pumps and pumping systems and one of its products is designated as the Grundfos MQ3-45 pump.
The Complainant is the registered owner of a series of trademarks for GRUNDFOS, two of which are as follows:
(a) Trademark registered number VR 1968 02852 for GRUNDFOS registered on October 25, 1968 in Denmark;
(b) Trademark registered number TMA 244,975 for GRUNDFOS registered on June 12, 1980 in Canada.
The Respondent registered the domain name on June 5, 2009. It resolves to a website with links to a large number of suppliers of pumps and pumping systems who are competitors of the Complainant. 5. Parties' Contentions A. Complainant
The Complainant alleges that the domain name should no longer be registered with the Respondent, but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered GRUNDFOS trademarks to which reference has already been made. It then says that the domain name is confusingly similar to the GRUNDFOS marks as the spelling of that word in the domain name is the same as the spelling of the same word in the trademarks with the addition of the designation of the Complainant's product, the MQ3 45 pump.
The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known GRUNDFOS mark and to use it in an illegitimate way, namely by using it to promote the products of the Complainant's competitors.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. In support of this proposition, the Complainant submits that the GRUNDFOS trademark is very well-known, the Respondent has registered a domain name consisting solely of that trademark and the Complainant's product designation and the Respondent has intentionally attempted to attract for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or locations or of a product or service on the website or location in breach of paragraph 4(b)(iv) of the Policy. It is also submitted by the Complainant that the whole of the conduct of the Respondent, including the fact that it has previously infringed the Complainant's trademark rights by registering another domain name, constitutes bad faith both with respect to the registration and the use of the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have found many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Panel accepts the evidence submitted by the Complainant that it owns the registered GRUNDFOS trademarks to which reference has been made, that they are all current and that it therefore has rights in those marks.
The Panel also finds that the disputed domain name is confusingly similar to the GRUNDFOS trademarks. The spelling of the substantial part of the domain name is the same as that of the mark; all that has been done to create the domain name is to add to the GRUNDFOS mark the designation of one of the Complainant's products, namely the MQ3 45 pump. Accordingly, the objective bystander, faced with the domain name and the GRUNDFOS trademark would assume that the domain name was referring to the well-known manufacturer of pumps and pumping systems that are sold under the trademark, including the very product whose designation is part of the domain name. That same principle has been applied in many UDRP decisions on analogous facts, such as Sony Kabushiki Kaisha, also trading as Sony Corporation v. Richard Mandanice, WIPO Case No. D2004-1046, where the addition to the SONY trademark of its product designated as Z5, was held to show that the domain name thus created, , was confusingly similar to the trademark.
It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
Thus, if the respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that it had until August 20, 2009 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts that:
(i) the GRUNDFOS trademark is very well known internationally;
(ii) it indicates the name of a well-know manufacturer of pumps and pumping systems including in Canada where the Respondent is domiciled;
(iii) the Respondent chose this prominent name for its domain name and added only the designation of one of the Complainant's products;
(v) the Respondent was not authorized by the Complainant to use the GRUNDFOS name or mark in a domain name or anywhere else; and
(vi) the Respondent has clearly been using the domain name for an illegitimate purpose, namely to promote the products of the Complainant's competitors.
The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(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 that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's 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 the respondent's website or location or of a product or service on the site or location.
The Complainant relies on paragraphs 4(b)(iv) and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b)(iv) of the Policy. That is so for the following reasons.
The evidence shows that the Respondent has registered as a domain name the Complainant's well-known GRUNDFOS trademark to which it has added only the designation of one of the Complainant's products. This raises the preliminary assumption that the domain name has been registered for some illegitimate purpose. Of course it was always open to the Respondent to show that this was not so, but it has declined to make any attempt to give a plausible explanation for registering a domain name incorporating a prominent trademark and the designation of one of the Complainant's products.
Secondly, the Respondent has then used the domain name to provide links to a website
which, on the evidence annexed to the Complaint, advertises pumps and pumping systems which are the type of products manufactured by the Complainant. However, those being promoted on the Respondent's website are in fact supplied by the Complainant's competitors. The Panel concludes that this has been done by the Respondent for its own commercial benefit.
Moreover, the present Respondent and its method of operation was the subject of adverse comment by the learned panelist in the previous decision Grundfos A/S v. Equipment Agents WIPO Case No. D2006-0242, where the Respondent had registered the domain name and linked it to a website where pumps and pumping systems manufactured by the Complainant's competitors were promoted. The panelist in that case concluded:
“The Complainant has established that the mark GRUNDFOS is distinctive and famous. An Internet user searching for products provided by the Complainant is likely to visit the Respondent's website. The Panel considers it highly unlikely that the Respondent by coincidence have registered the disputed domain name, which is different from the Complainant's trademark only by the addition of the suffix “pumps.” As a wholesaler of pumps and pump systems the Respondent has registered the disputed domain name only to attract customers, looking for products from the Grundfos Group, to market pumps of brands competing with the Complainant, hence using the Complainants well - established trademark for its own commercial gain. Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain name. There are no obvious reasons for the Respondent to have a legitimately use of the domain name. As has been established above, the only use of the domain name seems to be to market and offer products in mere competition to the Complainant”.
The Panel as presently constituted finds that those observations are directly applicable to the facts in the present case.
That conclusion makes it clear that the facts of the present case bring it squarely within the provisions of paragraph 4(b)(iv) of the Policy.
The Panel therefore finds that the Respondent has registered and used the domain name in bad faith.
The Panel finds that the Complainant has thus made out the third of the three elements that it must establish under the Policy. 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 the Complainant.
The Honourable Neil Anthony Brown, QC
Sole Panelist
Dated: September 10, 2009
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