The Complainant is Grundfos A/S of Bjerringbro, the Kingdom of Denmark, represented by Bech-Bruun Law Firm, the Kingdom of Denmark.
The Respondent is WangShuLi of Shanghai, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2010. On September 27, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On September 27, 2010, HiChina Zhicheng Technology Ltd. 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 29, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant confirmed its 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 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 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 together: "the Complainant"). The Complainant, 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 had a net turnover of over 3 billion American dollars in 2009.
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 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 13, 2010.
The disputed domain name resolves to a parking webpage, which displays the following announcement: “Internet Explorer cannot display the webpage”.
Until recently, the disputed domain name led Internet users to another website, operating under a different domain name that engaged in the marketing of pumps.
Before commencing the present UDRP action, the Complainant sent a Cease and Desist letter to the Respondent, dated July 8, 2010, to which the Registrar was copied, 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 words “pump service” in the disputed domain name are 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 in 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 the Complainant's good will and reputation in the GRUNDFOS trademark.
The Complainant further argues that the Respondent registered the disputed domain name 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/she 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 words in the English language, namely “pump” and “service”;
c) The Respondent did not object, having been granted fair opportunity to do so, to the Complainant’s request that English be the language of proceedings.
Upon considering the above, 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 words “pump” and “service” and the additional gTLDs “.com”.
The additional words “pump” and “service” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's GRUNDFOS trademark, especially as they refer directly to the goods and services rendered under the GRUNDFOS trademark by the Complainant.
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). 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).
Indeed, “The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
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 burden of rebuttal shifts to the Respondent, in the absence of which the Panel is entitled to conclude, that the Respondent lacks rights or legitimate interests in respect of the disputed domain name.
In the present case, the Complainant argues plausibly 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 such a prima facie case 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 are 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 owns 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).
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.
From the evidence submitted by the Complainant, the Panel finds that until recently, the disputed domain name led Internet users to another website, operating under a different domain name that engaged in the marketing of pumps. The Respondent’s use of the term “GRUNDFOS” to promote similar or identical goods to the goods being sold by the Complainant clearly evidences that the Respondent registered the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of the GRUNDFOS trademark, and indicates that the Respondent’s primary intent with respect to the domain name is to trade off the value of these. The Respondent’s previous actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. Indeed, the use the Respondent made of the disputed domain name to offer quasi-identical goods to the ones being offered by the Complainant constitutes bad faith on behalf of the Respondent (see Schur International A/S v. Jorge Massa,WIPO Case No. D2009-0450).
The fact that the Respondent ceased the use of the disputed domain name does not preclude the Panel from finding bad faith, having taken into consideration all the circumstances of this case. See Mobimate Ltd. v. “World Mate” and Sachiwo Inagaki,WIPO Case No. D2008-1867. The Panel cites the following similar case with approval: “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith” (Tata Sons Limited v. TATA Telecom Inc/T, Mr. Singh,WIPO Case No. D2009-0671).
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 may be taken into account in appropriate circumstances as additional indicia of 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 previous use in 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 11, 2010
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