The Complainant is Grundfos A/S of Bjerringbro, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Kevin Wallace of Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2011. On February 11, 2011, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On February 16, 2011, Moniker Online Services, LLC 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 February 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 17, 2011.
The Center appointed Hariram Jayaram as the sole panelist in this matter on March 28, 2011. 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 part of the Grundfos Group established in 1945 and is now fully owned by the company Grundfos Holding A/S and ultimately by Poul Due Jensen Foundation established in Denmark. GRUNDFOS is a trade mark used in connection with the Complainant’s products.
The disputed domain name was registered on June 4, 2010. 5. Parties’ Contentions A. Complainant
Grundfos Group is one of the largest and leading manufacturers of high technology pumps and pump systems in the world. The Grundfos Group is represented by more than 82 companies in 45 countries around the world including in the United States of America. By the end of 2009, the Grundfos Group had approximately 15,800 employees and the net turnover in 2009 exceeded Danish Kroner 17.0 billion. The Complainant trades under the well known name and trade mark GRUNDFOS, including in the United States of America. The Complainant originally registered the name GRUNDFOSS for pumps as early as in 1946. GRUNDFOSS was later changed to GRUNDFOS in 1967. Today the GRUNDFOS trade mark is registered worldwide, including in Denmark and the United States of America. The Complainant’s name and trade mark GRUNDFOS is well known all over the world and especially within the relevant industries. The disputed domain name was registered on June 4, 2010 and is currently used for a website displaying sponsored links to various service providers and different search categories containing sponsored links. On October 12, 2010, a cease and desist letter was sent to the Respondent requesting the Respondent to transfer the disputed domain name free of charge to the Complainant no later than October 19, 2010. Another cease and desist letter was sent to the Respondent on December 20, 2010 requesting the Respondent to transfer the disputed domain name free of charge to the Complainant no later than December 27, 2010. The letters remain unanswered. The fact that the disputed domain name consists mostly of the Complainant’s well known trade mark, a likelihood of confusion between the domain name in question clearly exists, as the dominant and characteristic part of the domain name is “Grundfos”. The addition of the prefix “wesell”, which is a generic expression is secondary and does not remove the distinctiveness of the mark GRUNDFOS which continues to constitute the most predominant element within the disputed domain name. In particular, in the present case the relevant public could be induced to assume that they are able to buy original “Grundfos” products from the Complainant on the website or the relevant public will be lead to believe that the website is owned by or related to the Complainant. The addition of the term “wesell” is evidently itself insufficient to avoid a likelihood of confusion between the domain name and the GRUNDFOS trade mark. The disputed domain name is confusingly similar to the Complainant’s well known trade mark GRUNDFOS.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s reasons for the registration of the disputed domain name, based on the available information, can be considered as use of the disputed domain name for attracting Internet users to the website under the disputed domain name by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the website under the disputed domain name. The Respondent’s format of webpage is commonly known as “link farm”, which generates revenue in the form of “pay-per-click” in the sponsored links displayed in the page. Indeed, one may conclude that the Respondent does not run any business activity in connection with the disputed domain name. The Respondent is thus merely using the disputed domain name to attract as many Internet users as possible to its websites, which act as mere doors to other sites, but for which the Respondent is compensated. Such use does not give the Respondent any right or legitimate interest in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its GRUNDFOS trade mark or to apply for any domain name incorporating the trade mark. There is no business relationship between the Grundfos Group and the Respondent. The disputed domain name is not used in connection with bona fide offering of goods. The Complainant has shown prima facie evidence of the absence of any rights or legitimate interest in the disputed domain name by the Respondent, which is why the burden shifts to the Respondent.
The disputed domain name which incorporates the Complainant’s registered trade mark GRUNDFOS has been registered and is being used in bad faith. The Respondent appears to have acquired the disputed domain name on June 4, 2010. The Complaint’s trade mark, on the other hand, has been established many years ago. No original “Grundfos” products from the Complainant is marketed or sold via the webpage the disputed domain name is used for. The Respondent’s use of the prefix “wesell” communicates to the public that “Grundfos” products are sold via the webpage and thus the disputed domain name has been registered in bad faith. The Respondent is infringing the Complainant’s trade mark rights by making commercial use of a designation confusingly similar to the Complainant’s trade mark GRUNDFOS. The Complainant’s trade mark GRUNDFOS is well known worldwide. Thus it is unlikely that the Respondent is unaware of the Complainant’s trade mark GRUNDFOS, since the disputed domain name displays sponsored links to inter alia manufactures of pumps, which is the main activity of the Grundfos Group. It is evident that the substantial intention with the registration and use is to profit on an illegal exploitation of the goodwill and reputation related to the Complainant of visits by Internet users. Based on the above, the registration and use of the disputed domain name is undoubtedly made in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements to obtain an order for the domain name to be transferred to it:
- The domain name registered by the Respondent is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint. A. Identical or Confusingly Similar
The Complainant manufactures high technology pumps and pump systems and uses the trade mark GRUNDFOS for its products. The said trade mark has been registered worldwide by the Complainant including in the United States of America, the home country of the Respondent. Apart from the gTLD “.com”, the disputed domain name is different from the Complainant’s widely known trade mark GRUNDFOS in only one respect: there is the addition of the word “wesell” in the disputed domain name which is a combination of the two generic words “we” and “sell”. Addition of generic terms to a well known trade mark to form a domain name cannot prevent the domain name from being regarded as confusingly similar to the trade mark incorporated in the domain name. Particularly in the case of the disputed domain name in this proceeding, the Respondent has chosen generic terms which when combined with the Complainant’s GRUNDFOS trade mark, forms a sentence i.e. “We sell Grundfos”. The choice of the generic terms and the combination thereof with a well known trade mark by the Respondent will not diminish the likelihood of confusion between the disputed domain name and the said trade mark but further increase it.
In Google, Inc. v. Xtraplus Corp.,WIPO Case No. D2001-0125, the disputed domain names were , , and and the panel held that:
“[…] the Domain Names are all formed by adding a generic term to Complainant's mark: "gear" and "buy". Both terms would be apt selections in the context of marketing promotional products for Complainant's site.”
The Panel agrees with the above decision and concludes that addition of the generic word “wesell” in the disputed domain name will not prevent the disputed domain name from being confusingly similar to the Complainant’s trade mark GRUNDFOS.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has made allegations against the Respondent as to the Respondent’s lack of rights and legitimate interests. The Complainant has argued that it has no relationship with the Respondent and the Complainant has not granted any license or authorization to the Respondent to use the GRUNDFOS trade mark particularly as a domain name. The Complainant has contended that the disputed domain name resolves to a website which offers sponsored links (“link farm”) to the websites of various service providers and the Respondent does not run any business activity in connection with the disputed domain name. All these allegations have gone unchallenged by the Respondent who has chosen not to submit a response.
In this Panel’s view, the Respondent’s diversionary use of the disputed domain name to attract Internet users to its own website and the use of a well known trade mark in a domain name without the authorization of the bona fide trade mark owner show that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name or a bona fide offering of goods and services.
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant has argued that the Respondent has registered and used the disputed domain name in bad faith as reflected in the fact that: the Respondent registered the disputed domain name several years after the Complainant established rights in its GRUNDFOS trade mark; no original goods of the Complainant using the GRUNDFOS trade mark are sold via the website corresponding to the disputed domain name; the use of the prefix “wesell” by the Respondent in the disputed domain name is with intention to communicate to the public that the Complainant’s “Grundfos” products are sold on the Respondent’s website; and the website operates as a link farm and offers sponsored links to inter alia manufacturers of pumps, i.e. competitors of the Complainant.
In Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404, the panel held that:
“Respondent has used the disputed domain name, first, to direct Internet users to a link farm parking page offering goods and services competitive with those of Complainant and second, to direct Internet users to a website offering goods and services directly competitive with those of Complainant. Both of these uses employ Complainant's well-known trademark in the disputed domain name for commercial gain by creating Internet user confusion through suggesting source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. This constitutes bad faith registration and use of the disputed domain name.”
This Panel agrees with the observations made in the above decisions and finds that the evidence before the Panel does demonstrate that the Respondent has registered and is using the Complainant’s GRUNDFOS mark in the disputed domain name in bad faith. The Panel finds that the Respondent was aware of the Complainant and its business when the Respondent registered the disputed domain name considering the combination of the words and the Complainant’s trade mark in the disputed domain name by the Respondent and the use of the disputed domain name for a website which offers sponsored links to third party websites.
Once again the allegations of the Complainant have not been challenged by the Respondent. The Panel finds that the Complainant has satisfied the requirements of 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.
Hariram Jayaram
Sole Panelist
Dated: April 11, 2011
Full & Egal Universal Law Academy