The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Joseph Zajac, Zajac Holding Company LLC of Roswell, Georgia, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2016. On June 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 14, 2016, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2016.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 26, 2016. 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 part of the Grundfos Group which was established in Denmark in 1945. It appears that the group traded under the name “Grundfoss” until about 1967 when the current name was adopted.
According to the Complaint, the Grundfos Group is one of the largest and leading manufacturers of pumps in the world. It produces more than 16 million pumps each year. Its products include centrifugal, submersible, dosing and other pumps. At the end of 2014, the Group employed more than 19,000 employees, in some 80 companies in some 55 countries around the world. These countries include the United States, other North and South American countries, countries in the Asia/Pacific region, Europe and the Africa/ Middle East region.
All of its activities are carried on under or by reference to the trademark GRUNDFOS and have been since about 1967.
In 1989, the Grundfos Group was the first pump manufacturer to be certified according to the ISO 9001 Quality Standard. The Complaint includes evidence that the Grundfos Group has been awarded numerous certificates for its expertise in the pump market.
At the end of 2014, the Group had net turnover in excess of USD 4.1 billion. It also expends a very substantial amount on advertising. In 2014 alone, there were over 1,200,000 visitors to its website at . According to its Annual Report for 2014, the goodwill in the Group was estimated at approximately EUR 57 million.
The Complainant has numerous registered trademarks for, or based on, GRUNDFOS around the world. For present purposes, it is sufficient to refer only to three:
- Danish Trademark No. VR 1946 01968, GRUNDFOS in respect of goods in International Classes 7 and 11, which was registered on December 14, 1946;
- European Union Trademark (EUTM) No. 006654339, GRUNDFOS in respect of a wide range of goods in International Classes 7, 9, 11, 12, 19, 37, 39 and 40, which was registered on December 17, 2008;
- United States Trademark No. 782,042, GRUNDFOS in respect of a range of pumps in International Class 7, which was registered on December 22, 1964.
According to the Registrar, the disputed domain name was registered to the Respondent on July 28, 2011. Shortly before the Complaint was filed it resolved to a website headed “ChemW Specialty Chemical Solutions” which offered for sale “Grund Fos MQ” products. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
No response has been filed. The Complaint has been sent, however, to the physical and electronic addresses specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and in accordance with the Policy, the Rules, and any rules and principles of law deemed applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of at least the registered trademarks for GRUNDFOS identified in section 4 above.
Disregarding the “.com” gTLD, the disputed domain name differs from the Complainant's trademark by the addition of the suffix “mq” to the Complainant’s trademark. As noted above, however, the term “MQ” is used by the Complainant to designate a model or line of its pumps. Therefore the confusing similarity with the Complainant’s trademarks is reinforced by this addition.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a 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 trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant advances two lines of argument under this heading. First, it contends its trademark is a well-known trademark. Therefore, the Complainant appears to contend that, in accordance with paragraphs 17 to 19.7 of article 6 of the Joint Recommendation Concerning Provision on the Protection of Well-Known Marks and article 6 of the Paris Convention for the Protection of Industrial Property, the Respondent is presumed not to have rights or legitimate interests in a confusingly similar name.
Secondly, the Complainant states that it has not authorised the Respondent to use the disputed domain name. The Complainant points out that the Respondent is not an authorised dealer, reseller or repairer of the Complainant’s products and the parties are not co-operating in any way. As the Complainant contends, while the Complainant’s products and trademark are displayed extensively on the website to which the disputed domain name resolves, the website does not clearly disclose the nature of the relationship between the Complainant and the Respondent; i.e., that the Respondent is completely unaffiliated with the Complainant. The disputed domain name is plainly not derived from the Respondent's name.
In similar circumstances, the learned panelist in Grundfos A/S v. Ahmed Alshahri, WIPO Case No. D2015-1112 held that the respondent did not have rights or legitimate interests in the domain name at issue in that case as a result of the respondent’s failure to clearly and prominently disclose that it was independent of, and not affiliated with, the Complainant.
The website to which the disputed domain name resolves does prominently and repeatedly use the Complainant’s trademark. It does also identify that the operator of the website is “ChemW”. That name does not clearly identify the independent status of the Respondent. There is no other clear and prominent statement accurately identifying the nature of the Respondent’s relationship to the Complainant as an independent and unauthorized reseller. As in Grundfos A/S v Ahmed Alshahri, supra, therefore, the Panel finds that the Complainant has made out a prima facie case on the record in this proceeding that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint. See e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
It is plain from the use that the Respondent is making of the disputed domain name that the Respondent was well aware of the Complainant’s trademark when the Respondent registered the disputed domain name.
As in Grundfos A/S v. Ahmed Alshahri, supra, and in the absence of any explanation or justification from the Respondent, it follows from the Respondent’s failure to clearly disclose on the website the nature of its relationship with the Complainant and the finding that it does not have rights or legitimate interests in the disputed domain name that the Respondent has registered and is using the disputed domain name contrary to paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Complainant has also established the third requirement under the Policy. 6. 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.
Warwick A. Rothnie
Sole Panelist
Date: August 2, 2016
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