The Complainant is Grundfos A/S of Denmark, represented by Bech-Bruun Law Firm of Denmark.
The Respondent is WangShuLi of 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 September 17, 2010. On September 17, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On September 19, 2010, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On September 27, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On September 29, 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 October 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2010.
The Center appointed Jonathan Agmon as the sole panelist in this matter on October 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, Grundfos A/S, is a subsidiary of the Grundfos Group (hereinafter: "the Complainant"). The Grundfos Group, which was established in 1945 and is owned by Poul Due Jensen's Foundation, includes over 82 companies in 45 countries and specializes in manufacturing high technology pumps and pump systems.
The Complainant employs approximately 15,800 employees and has a net turnover of over DK 17.2 billion.
The Complainant has been using the GRUNDFOS mark in connection with its business and owns multiple trademark registrations for this mark in many countries around the world. For example: United Kingdom trademark registration No. 856108 – GRUNDFOS, with the registration date of August 17, 1963; Irish trademark registration No. 67887 – GRUNDFOS, with the registration date of February 17, 1964; Denmark trademark registration No. 196802852 – GRUNDFOS, registered on October 25, 1968; International trademark registration No. 341863 – GRUNDFOS, filed on January 12, 1968, designated for Austria, Bosnia and Herzegovina, Switzerland, Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Liechtenstein, Morocco, Monaco and others; Chinese trademark registration No. 145165 – GRUNDFOS, registered on March 15, 1981; and many others.
The Complainant has also developed a formidable presence on the Internet and is the owner of several domain names, which contain the term “grundfos”. For example: , , and many others. The Complainant is using these domain names in connection with its activities.
The disputed domain name was registered by the Respondent on May 12, 2010.
The disputed domain name currently does not resolve to a parking webpage, and when entered into an Internet browser the following announcement is displayed: “Internet Explorer cannot display the webpage”.
Before commencing the present UDRP action, the Complainant sent a cease and desist letter to the Respondent, dated August 2, 2010, and an additional letter to the Registrar dated July 7, 2010, asking the Respondent to transfer the disputed domain name in the name of the Complainant based on the Complainant’s trademark rights. The Respondent did not reply to the Complainant's letter. 5. Parties’ Contentions A. Complainant
The Complainant argues that it has established significant goodwill in the GRUNDFOS mark, which has become well-known for high technology pumps and pump systems.
The Complainant also argues that the disputed domain name is identical or confusingly similar to the GRUNDFOS trademark, owned by the Complainant, seeing that it incorporates the trademark as a whole. The Complainant further argues that the additional geographical indication "China" in the disputed domain name is insufficient to avoid confusing similarity between the GRUNDFOS trademark and the disputed domain name.
The Complainant further argues that it has rights to the GRUNDFOS trademarks as this trademark is widely recognized with the Complainant and with its operation.
The Complainant further argues that the Respondent did not make legitimate use of the disputed domain name.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues it had not licensed or otherwise permitted the Respondent to use its GRUNDFOS trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent registered the disputed domain name for the purpose of free-riding on the Complainant's good will and reputation in the GRUNDFOS trademark or in an attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the GRUNDFOS trademark and products at the time he registered the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“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.
The Complainant requested that the language of proceedings should be in English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.“ (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The disputed domain name consists of Latin letters, rather than Chinese letters;
b) The disputed domain name includes a name of a geographic indication in the English language ("China");
c) The Respondent did not object to the Complainant’s request that English be the language of proceedings despite the Center’s provision of documents in both English and Chinese.
Upon considering the above, and taking into consideration all of the facts and circumstances of this case, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark GRUNDFOS. For example, United Kingdom trademark registration No. 856108 – GRUNDFOS, with the registration date of August 17, 1963; Irish trademark registration No. 67887 – GRUNDFOS, with the registration date of February 17, 1964; Denmark trademark registration No. 196802852 – GRUNDFOS, registered on October 25, 1968; International trademark registration No. 341863 – GRUNDFOS, filed on January 12, 1968, designated for Austria, Bosnia and Herzegovina, Switzerland, Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Liechtenstein, Morocco, Monaco and others; Chinese trademark registration No. 145165 – GRUNDFOS, registered on March 15, 1981; and many others.
The disputed domain name differs from the registered GRUNDFOS trademark by the additional word "China" and the additional gTLD suffix “.com”.
The addition of the geographical indicator "China" is insufficient to avoid confusing similarity as it is a non-distinctive element that is somewhat connected with the Complainant is markets its products in among other countries, in China. The most prominent element in the domain name is clearly the term "grundfos", which lacks dictionary meaning in both English and Chinese, and may cause the public to view it as connected to the GRUNDFOS trademark.
Previous WIPO UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). See also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com” is without legal significance since the use of a gTLD is technically required to operate the domain name.
The result is that the Complainant has shown that the above disputed domain name is identical or confusingly similar to a trademark, in which the Complainant has rights. C. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the responsibility of coming forward with evidence shifts to the Respondent to show that he has rights or legitimate interests in respect to the disputed domain name.
In the present case, the Complainant has demonstrated that the Respondent lacks rights or legitimate interests in respect of the domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard inter alia due to the fact that Complainant has not licensed or otherwise permitted the Respondent to use the GRUNDFOS trademark, or a variation thereof.
The Respondent had not submitted a Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned registrations for the GRUNDFOS trademark at least since the year 1963. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The disputed domain name currently does not resolve to an active webpage, and the Panel’s browser displays an error announcement when attempting to view it. However, the fact that the Respondent does not use this domain name does not preclude the Panel from finding bad faith, having taken regard of all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867.
Passive holding of a domain name may, in certain circumstances, constitute evidence of bad faith use. In this case, the Panel notes that the Complainant’s mark is well-known, there is no evidence of any actual or contemplated good-faith use by the Respondent, and as discussed further below, the Respondent has failed to reply to the Complainant’s cease-and-desist letter. In the circumstances, the Panel cannot conceive of any plausible good-faith use of the domain name by the Respondent. See Telstra Corporation, supra.
Paragraph 4(b)(iv) of the Policy provides that it will be considered bad faith registration and use by the respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name is resolved to.
The Panel also notes that the disputed domain name is confusingly similar to the Complainant’s trademark. Previous WIPO UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see E, Inc v. Triple E Holdings Limited,WIPO Case No. D2006-1095). To this end, prior WIPO UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
In addition, the Panel notes that the Respondent failed to reply to the Complainant's cease and desist letter.
This constitutes additional evidence to the Respondent's bad faith (Alstom v. Stockmarket Domains,WIPO Case No. D2008-1542).
Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the similarity between the disputed domain name and the Complainant's mark and the Respondent's default in responding to the cease and desist letter, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: November 10, 2010
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