The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Ahmed Alshahri of Dammam, Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”), is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2015. On June 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 1, 2015, the Registrar 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 July 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on August 14, 2015. 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 a member of the Grundfos Group, which supplies many millions of pumps worldwide under and by reference to its GRUNDFOS trade mark. The business was founded in 1945.
The Complainant is the registered proprietor of numerous trade mark registrations around the world for the GRUNDFOS mark, the earliest being a Danish registration in classes 7 and 11 dating back to 1946. The Complainant is also registered proprietor of three Saudi Arabian registrations dating back to 1993 of the GRUNDFOS trade mark in classes 7, 9 and 11 respectively.
The Domain Name was registered on March 25, 2013 and is connected to an Arabic language website headed with the Complainant’s Grundfos logo and a United Park logo for Park Water Pumps.
On November 27, 2014 the Complainant’s representative wrote to the Respondent drawing the latter’s attention to the Complainant’s trade mark rights and seeking inter alia transfer of the Domain Name. The Complainant has not received any response notwithstanding reminders sent by email on December 18, 2014 and January 15, 2015. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its GRUNDFOS trade mark, which it claims is a famous mark. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
At the second level the Domain Name comprises the Complainant’s trade mark, GRUNDFOS, and the letters “k”, “s” and “a”, which the Panel takes to be an acronym for the Kingdom of Saudi Arabia, where the Respondent resides.
The Panel believes it to be very likely that Internet users seeing the Domain Name will believe it to be a domain name of or associated with the Complainant and/or its Saudi Arabian distributor.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
The Panel has been given insufficient information about the Respondent’s website, it being in the Arabic language and no translation having been provided. The Complainant alleges that “the Respondent evidently and intentionally was infringing the Complainant’s trade mark rights by using the domain name for website marketing and offering for sale a broad range of pumps.” Clearly, they are offering for sale the Complainant’s brand of pumps, given the prominent use of the Complainant’s logo on the site; but what else are they selling? The website features prominently a logo for Park water pumps, which may be a completely unconnected brand, alternatively it might be a secondary Grundfos brand. The Panel is uncertain.
In the absence of any clear information in the matter, the Panel proposes to address the issue on the basis that the Respondent only markets the Complainant’s pumps, albeit not as an authorized reseller.
To what extent is it reasonable for a reseller of goods to use for (or as part of) a domain name the original manufacturer’s trade mark? The issue is addressed in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), which poses the question: “Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?” At this stage, for present purposes it is only necessary to quote the first part of the so-called ‘consensus view’:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data1 principles.”
In this case the Respondent appears to be offering for sale the Complainant’s goods. For the reason indicated, the Panel will also assume in the Respondent’s favour that the Respondent sells only the Complainant’s goods. Where the Respondent’s case falls down is on the next requirement, namely that the site does not appear to accurately and prominently disclose the registrant’s relationship with the trade mark holder. The Respondent is an unauthorized reseller, yet the prominent use of the Complainant’s logo would indicate to most visitors some degree of official authorization, even if in the small print in Arabic there may be some disclaimer.
Moreover, further down the answer posed in paragraph 2.3 of WIPO Overview 2.0 there appears the following passage:
“However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., ).”
This is a view to which the Panel subscribes. In the Panel’s view, in selecting the Domain Name, a domain name comprising at the second level the Complainant’s trade mark and the acronym for the Kingdom of Saudi Arabia, the Respondent is falsely identifying his business as being the Complainant’s Saudi Arabian subsidiary or the official distributor of the Complainant’s products in Saudi Arabia.
In the Panel’s view a business operating in this guise cannot give rise to rights or legitimate interests within the meaning of paragraph 4(c)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
On the same basis and in the absence of anything from the Respondent, whether it be responses to the Complainant’s pre-complaint letters or a Response in this proceeding, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. 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 Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: August 21, 2015
1 Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
Full & Egal Universal Law Academy