The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is NanJingDianTeJiDianSheBeiYouXianGongSi of Nanjing, Jiangsu Province, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2013. On April 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 30, 2013.
On April 23, 2013, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On April 25, 2013, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 proceeding commenced on May 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2013. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on May 23, 2013.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 28, 2013. 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 A. Complainant
The Complainant is a company incorporated in Denmark.
The Complainant is the owner of numerous registrations worldwide for the trade mark GRUNDFOS (the “Trade Mark”), including in China, where the Respondent is based. B. Respondent
The Respondent is a company apparently with an address in China. C. The Disputed Domain Name
The disputed domain name was registered on May 20, 2012. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant is part of the Grundfos Group, established in 1945. The Grundfos Group is one of the largest and leading manufacturers of circular pumps in the world, producing more than 16 million pumps per year.
By the end of 2011, the Grundfos Group had approximately 17,500 employees and net turnover in 2011 exceeded USD 3.6 billion. The Grundfos Group is represented by more than 80 companies in more than 55 countries around the world, including in China.
The Complainant trades and conducts business worldwide under the Trade Mark. The Complainant had GRUNDFOSS registered for pumps as early as in 1946. The trade mark GRUNDFOSS was changed to GRUNDFOS in 1967.
The Complainant and the Trade Mark are well-known all over the world within the relevant industry.
The Respondent is not an authorized reseller of the Complainant's products. The Complainant has sent a cease and desist letter to the Respondent asking it to transfer the disputed domain name. The Respondent has never replied to the cease and desist letter.
The disputed domain name is used in respect of a website in respect of a business which claims to be an importer and distributor of Grundfos pumps (the “Website”). The Website contains photographs of a wide range of the Complainant's products, and uses the identification numbers of the Complainant's products.
The Complainant has never sold Grundfos pumps directly to the Respondent and none of the Complainant’s authorized resellers have been selling Grundfos pumps to the Respondent. The Complainant therefore questions whether the pumps the Respondent claims to be selling on the Website are genuine Grundfos pumps or counterfeits.
It is not possible to buy any of the displayed pumps directly from the Website. The bottom of the Website contains links which lead the Internet user to websites of pump manufacturers other than Grundfos. The Respondent is therefore using the Trade Mark to promote or sell products produced by competitors of the Complainant.
The Respondent has no trade mark registrations for the Trade Mark. The Respondent is not a licensee of Complainant nor otherwise permitted to use the Trade Mark or register the disputed domain name.
The Website does not accurately disclose the Respondent's relationship with the Complainant, for example by explaining that the Website is not an official website of the Complainant.
The Complainant believes that the Respondent has attempted to pass off its Website as an official or authorized website of the Complainant by using the Trade Mark and by not accurately disclosing that the Respondent is not an authorized reseller of Grundfos products or in any way affiliated with the Complainant.
The disputed domain name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety, together with the non-distinctive acronym “nj” which is an abbreviation for Nanjing, the city in China in which the Respondent appears to be based.
The disputed domain name has been registered and used in bad faith. Its registration and use in respect of the Website constitutes bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the registration agreement for the disputed domain name is Chinese.
Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant is a Danish company and is unable to communicate in Chinese;
(2) Conducting the proceeding in Chinese will cause undue delay and the Complainant will incur substantial translation costs;
(3) The Website contains English language as well as Chinese language contact information; and
(4) The Respondent has never replied to the Complainant’s cease and desist letter which suggests it will show no active interest in the proceeding.
The Respondent did not file a Response and did not file any submissions with respect to the language of the proceeding.
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’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).
The Website contains more than just contact information in English. The entire Website comprises both Chinese and English language versions.
The Panel therefore finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant in the English language (Finter Bank Zurich v. Shumin Peng, supra). The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, the Panel finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English. 6.2. Decision
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail. A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by over 70 years.
UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The disputed domain name comprises the Trade Mark in its entirety together with the non-distinctive and descriptive letters “nj” which is a commonly used acronym in the Chinese speaking world for Nanjing, the city in which the Respondent appears to be based. This does not serve to distinguish the disputed domain name from the Trade Mark in any significant way.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name by over 70 years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (see Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; and Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the Website is being used to attract potential customers for the Complainant’s pumps, who are then referred to links to websites which offer for sale pumps of third party competitors of the Complainant.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 Respondent’s website or location.
The evidence shows that the Respondent has registered the disputed domain name and set up the Website, which features the Complainant’s products and the serial numbers for the Complainant’s products, in order to attract potential customers for the Complainant’s products, who are then referred to third party links to websites offering for sale pumps of the Complainant’s competitors. The Panel finds this constitutes cogent evidence of bad faith. The Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
At some stage following filing of the Complaint, the Website has been taken down. The disputed domain name is currently inactive. In all the circumstances of this proceeding, the Panel finds this constitutes further evidence of bad faith.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 7. Decision
For 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.
Sebastian M.W. Hughes
Sole Panelist
Dated: June 11, 2013
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