WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Grundfos A/S v. Huangyuping Case No. D2010-0788 1. The Parties
The Complainant is Grundfos A/S of Bjerringbro, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Huangyuping of Shenshi, Guangdong Sheng, the People's Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2010. On May 18, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On May 19, 2010 and May 24, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification responses confirming that the Respondent is listed as the registrant and providing the contact details. On May 25, 2010, the Center wrote by email to the parties in both Chinese and English regarding the language of proceedings. On May 26, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. 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 May 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 21, 2010.
The Center appointed C. K. Kwong as the sole panelist in this matter on June 28, 2010. 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 owner of numerous trade marks consisting of the word GRUNDFOS. These registrations include, in particular, the following:
(a) Danish trade mark registration No. VR 1968 02852 which was registered on October 25, 1968 in respect of certain goods under Classes 9;
(b) Chinese trade mark registration No. 145165 which was registered on March 15, 1981 in respect of certain goods under Class 9.
The uncontradicted evidence produced by the Complainant shows that the registration of its aforesaid GRUNDFOS mark in Denmark and China occurred many years before the registration of the disputed domain name on January 8, 2010.
Other than the particulars shown on the printouts of the database searches conducted by the Complainant of the WhoIs database (as provided in Annex 2 to the Complaint), the website of the Respondent (as provided in Annex 9 to the Complainant) and the WhoIs database search results of May 31, 2010 provided by the Center, there is no evidence in the case file concerning the background of the Respondent and its business. 5. Parties' Contentions A. Complainant
The Complainant has made the following contentions:
The Complainant is part of the Grundfos Group which was established in 1945 and has more than 82 companies in 45 countries including China with many distributors. According to the extract of its annual report 2009, the Grundfos Group has 17,900 employees and a net turnover exceeding DK19 billion by the end of 2008. The Grundfos trade mark is registered worldwide and is claimed to be well-known in support of which an article from Fortune Magazine 2003 and a screenshot from Google dated May 11, 2010 were produced.
The Respondent is the contact person of Shenzhen Yong Xang Shang Industrial Equipment Company Limited, which is apparently the operator of the website using the disputed domain name owned by the Respondent. Such website indicates that the operator of the site is engaged in selling pumps and relevant parts with the Complainant's products being allegedly sold together at the same time. The Complainant's entire trade mark GRUNDFOS is embodied in the disputed domain name which is confusingly similar. Customers may be confused into believing that they are buying products from a certified distributor or a party working in cooperation with the Complainant when actually the Complainant has not licensed or otherwise permitted the Respondent to use its GRUNDFOS trade mark. There is no business relationship between the Grundfos Group and the Respondent. Internet users would be attracted to the website by reason of the confusion the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or the products or services offered in such website.
The Respondent is also in the business of selling pumps and must be familiar with the Complainant and its products. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Notice of Proceedings
The contact particulars of the Respondent and the disputed domain name were fully set out in the WhoIs search results provided in Annex 2 to the Complaint, which was filed on May 18, 2010 and the WhoIs search result of May 31, 2010 as provided by the Center (“the Database Records”).
Such contact particulars in the Database Records also agree with the answers to Request for Registrar Verification provided by the Registrar to the Center on May 19, 2010 and May 24, 2010.
On May 31, 2010, the Center forwarded the Notification of Complaint and Commencement of Administrative Proceeding together with the Complainant including annexes to the Respondent in accordance with the contact details above by email with copies to the Registrar. The Center also forwarded Written Notice of the Proceedings in accordance with the relevant contact details to the postal and facsimile addresses of the Respondent as well as those as shown in the website using the disputed domain name.
The Panel finds that as long as the Complainant (or the Center as the case may be) has communicated with the Respondent using the exact contact information which the Respondent has chosen to provide to the Registrar, as reflected in the Database Records, their respective obligations of such communications will be discharged and the Respondent will be bound accordingly.
The Panel is satisfied that the Center has discharged its responsibility under paragraph 2(a) of the Rules to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint and that the failure of the Respondent to furnish a Response is not due to any apparent omission or inadequate communication by the Center. B. Language of Proceedings
In response to the Center's notification in English and Chinese of May 25, 2010 to both parties concerning the language of proceedings, the Complainant filed a request for English to be the language of this administrative proceeding on May 26, 2010.
Paragraph 11(a) of the Rules provides:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The language of the registration agreement for the disputed domain name is Chinese as confirmed by the Registrar.
In support of its request, the Complainant has inter alia argued that the Complainant's trade mark (in English alphabets) is fully incorporated in the disputed domain name and meant for English speaking people.
The Panel has taken into consideration the fact that (a) the disputed domain name consists entirely of English letters being a combination of (i) yxs (which is apparently the first letter of the English translation of the Chinese name of Yong Xang Shang and (ii) the English mark of the Complainant; (b) the Respondent has provided the contact details in English to the Registrar; and (c) despite the sending of a notice in both Chinese and English by the Center to the parties on May 25, 2010 regarding the language of proceedings and express invitation of the Respondent to submit its comments on the Complainant's submission by May 30, 2010 with a follow up email to the parties on May 27, 2010, the Respondent has not raised any objections or indicated that it has any difficulty whatsoever.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' abilities to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; also Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
Taking all circumstances into account, the Panel is satisfied that there is no prejudice or unfairness to the Respondent for these proceedings to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. C. The Three Elements
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that, “[t]he Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 14(b) of the Rules further provides that, “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provisions of, or requirement under these Rules or any requests from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”. Paragraph 5(e) of the Rules further provides that, “[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”.
The failure of the Respondent to respond does not automatically result in a favourable decision to the Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 and Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465.
The said three elements are considered below. 1. Identical or Confusingly Similar
On the evidence available before the Panel, it has no hesitation in finding that the Complainant has rights in the trade mark GRUNDFOS by reason of its various trade mark registrations as recited in Section 4 above.
Furthermore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade mark GRUNDFOS. The addition of the 3 letters “yxs” as a prefix is not sufficient to distinguish the disputed domain name from the Complainant's trade mark GRUNDFOS. The 3 alphabets “yxs” do not constitute a pronounceable syllable, leaving the word “grundfos” as the distinctive feature in the disputed domain name. On the other hand, the 3 letters “yxs”, being an abbreviation for the Chinese name of the operator of the website, may suggest connection with the Complainant. It is also well-established practice to disregard the top-level part of a domain name like “.com”, when assessing whether a domain name is identical or confusingly similar to the mark in issue. Société Anonyme des Eaux Minerales d'Evian and Société des Eaux de Volvic v. Beroca Holdings B.V.I. Limited,WIPO Case No. D2008-0416.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy is established. 2. Rights or Legitimate Interests
The Complainant needs to establish a prima facie case showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Once such prima facie case is made, the burden will shift to the Respondent to prove that it has rights or legitimate interests in the disputed domain name.
In the present case, there is prima facie evidence of the Complainant's asserted registration and use of the registered trade mark GRUNDFOS prior to the Respondent's registration of the disputed domain name on January 8, 2010. From the evidence available to the Panel, the Respondent does not appear to be commonly known as . There is also no evidence available to demonstrate any legitimate noncommercial or fair use of the disputed domain name by the Respondent.
The Respondent is not using the disputed domain name in connection with “a bona fide offering of goods or services” for the purposes of paragraph 4(c)(i) of the Policy. The use of the Complainant's trade mark to offer for sale or to direct customers to the products of the Complainant's competitors is misleading and objectionable. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Abbott Laboratories v. United Worldwide Express Co., Ltd.,WIPO Case No. D2004-0088 and Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946.
There is no explanation on the record as to why it was necessary for the Respondent to incorporate the word “grundfos” in the disputed domain name.
The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name. 3. Registered and Used in Bad Faith
The printout of the website at the disputed domain name as shown in Annex 9 to the Complaint contained photographs of certain pumps and accessories.
It is the Complainant's unequivocal assertion that the Respondent is not an authorised dealer of Grundfos products.
Given the Complainant's uncontradicted claim of registration of its trade mark GRUNDFOS (including a registration in China) and apparent use of that mark for upwards of at least 40 years before the registration of the disputed domain name in 2010, there is a strong case for the Respondent to come forward to defend itself. Unfortunately, the Respondent has not come forward with any defence.
In this Panel's view, it is also not possible to foresee any plausible, genuine use of the disputed domain name by the Respondent on the present record.
It is the Complainant's uncontradicted claim that goods, namely pumps, marketed by the Respondent appeared in the website of “www.” are products of the same type as the Complainant which will result in the public being misled into believing that such products, are associated or otherwise connected with the Complainant. The parties are clearly in the same field of business. The Respondent has registered the disputed domain name and allowed the operators of the site, to which the disputed domain name resolves, to use it primarily for selling goods in a way which disrupts the business of the Complainant. On the basis of the evidence adduced, the Panel finds that the presumption under paragraph 4(b)(iii) of the Policy has been invoked.
By using whether directly or indirectly, authorizing or permitting the use of the disputed domain name by the operators of the site in the manner described above, the Respondent intentionally attempted to attract, for commercial gain, Internet users to go to the said website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or products on the website. The Panel accordingly finds that paragraph 4(b)(iv) of the Policy has also been invoked.
The Panel finds that the disputed domain name has been registered and is being used in bad faith under paragraph 4(a)(iii) of 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 disputed domain name be transferred to the Complainant.
C. K. Kwong
Sole Panelist
Dated: July 12, 2010
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