The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
The Respondent is Pham Xuan Sang of Hai Duong, Viet Nam, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Nhan Hoa Software Company Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2018. On the same day, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain name. On March 14, 2018, 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.
On March 12, 2018, the Registrar sent an email to the Complainant indicating that the Respondent agreed to transfer the disputed domain name to the Complainant if it was in “violation of the law of ICANN”. On the same day, the Center informed the Parties of procedural requirements that applied if they wished to explore settlement options. The Complainant did not request a suspension of the proceeding.
On March 14, 2018, the Center sent an email in English and Vietnamese to the Parties regarding the language of the proceeding. On the same day, the Complainant requested that English be the language of the proceeding on the same day or, alternatively, that English and Vietnamese both be languages 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 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 in English and Vietnamese of the Complaint, and the proceedings commenced on March 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 11, 2018. On March 27, 2018, the Respondent sent an email to the Center indicating that he would delete the disputed domain name. He did not submit a substantive response. On April 11, 2018, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 17, 2018. 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, a manufacturer of circular pumps that has operations around the world. The Complainant owns multiple trademark registrations for GRUNDFOS, including Vietnam trademark registration number 4-0008869-000, registered on August 9, 1993 in respect of water supply pumps and other goods in class 7. That trademark registration remains current.
The Respondent is an individual resident in Vietnam. His stationery indicates that he works for Thanh Dong Invest and Trading Co., Ltd., a supplier of automation equipment and industrial equipment in Hanoi, Vietnam.
The disputed domain name was registered on January 17, 2018. It resolves to a website in Vietnamese and English for the Thanh Dong Invest and Trading Co., Ltd. The website indicates that the Respondent is the company CEO. The website offers for sale a range of products, including many different “Grundfos prefabricated pumping stations”. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s GRUNDFOS trademark, which is a well-known trademark due to the Grundfos Group’s significant worldwide use of it for all products within the relevant industries. The disputed domain name integrates that trademark with the suffixes “vietnam” and “.com”, which do not negate the confusing similarity. The word “grundfos” is clearly recognizable within the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not an authorized dealer, reseller or repairer. The Complainant and the Respondent are not cooperating in any way. Even if the Parties were cooperating, the Respondent would still be acting unlawfully using the Complainant’s trademark without the Complainant’s explicit consent. The Respondent’s website shows pictures of the Complainant’s products and displays the Complainant’s trademark, which gives the impression that it is somehow connected to the Complainant. The Respondent is falsely identifying his business as being the Complainant’s business partner or official distributor of the Complainant’s products in the United States of America. There is nothing on the website indicating that it is not associated with the Complainant’s business.
The disputed domain name was registered and is being used in bad faith. The Complainant’s GRUNDFOS trademark is well-known and was registered long before the disputed domain name. The Respondent is promoting the Complainant’s products and is undoubtedly aware of the Complainant’s GRUNDFOS trademark. The disputed domain name and the content of the website to which it resolves are calculated to confuse Internet users into believing that the Respondent is part of the Complainant’s group of companies, an authorized agent or somehow connected to the Complainant when this is not the case. The purpose of the Respondent’s registration must clearly be to profit on the sale of the disputed domain name and/or to use the disputed domain name for commercial gain by attracting Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. B. Respondent
The Respondent submits that he did not know that he had infringed intellectual property rights. He informs the Center that he cancelled the disputed domain name registration after the initiation of the proceeding and hopes that the matter could be overlooked.
6. Discussion and Findings 6.1 Language of the Proceeding
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 Registrar confirmed that the Registration Agreement for the disputed domain name is in Vietnamese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that all prior communications in the case have been in English and the Respondent has not at any time objected to English; the Respondent undoubtedly understands English and is able to communicate in English, as the website to which the disputed domain name resolves displays Vietnamese and British flags meaning that the Respondent offers the website in both languages; and the Complainant is a Danish company.
The Respondent did not comment on the language of the proceeding.
Paragraph 10(b) and (c) of the Rules require the panel to ensure that the parties are treated with equality, that each party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint was filed in English. Having received notices from the Center in both English and Vietnamese, the Respondent did not comment on the language of the proceeding or indicate any wish to reply to file a formal response to the Complaint. Rather, he has indicated that he has deleted the disputed domain name registration. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Vietnamese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the GRUNDFOS trademark.
The disputed domain name wholly incorporates the GRUNDFOS trademark, with the additional elements “vietnam” and the generic Top-Level Domain (“gTLD”) suffix “.com”. The additional element “vietnam” is a country name. As a mere geographical term, that element is not capable of dispelling confusing similarity between a domain name and a trademark. See Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768. A gTLD suffix such as “.com” may generally be disregarded in the comparison between domain names and trademarks for the purposes of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(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.
As regards the first circumstance, the disputed domain name is confusingly similar to the Complainant’s trademark and is being used in connection with a website that not only offers for sale the Complainant’s water pumps but also advertises a website for a third party’s electric motors. Further, the Complaint states that the Complainant and the Respondent are not cooperating in any way but the website fails to disclose the Respondent’s lack of any relationship to the Complainant. Both these facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Accordingly, the Panel does not find that the Respondent’s use falls within the first circumstance of paragraph 4(c) of the Policy.
As regards the second circumstance, the Registrar’s WhoIs database indicates that the Respondent’s name is “Pham Xuan Sang”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance, the disputed domain name resolves to a website offering goods for sale. That is not a legitimate noncommercial or fair use of the disputed domain name. Accordingly, the Panel does not find that the Respondent’s use falls within the third circumstance of paragraph 4(c) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent did not rebut that prima facie case because he did not allege that he had any rights or legitimate interests.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) 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 online 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 Respondent registered the disputed domain name in 2018, many years after the Complainant obtained its trademark registrations, including in Vietnam where the Respondent is located. The disputed domain name wholly incorporates the Complainant’s GRUNDFOS trademark, adding only a geographical term, plus a gTLD suffix. The website to which the disputed domain name resolves prominently displays the Complainant’s GRUNDFOS trademark and offers for sale the Complainant’s GRUNDFOS water pumps. Although the Respondent submits that he did not know that he was infringing intellectual property rights, the evidence demonstrates that he knew of the Complainant’s trademark and that he did not have authorization to register it as part of a domain name. In these circumstances, the Panel finds that the Respondent registered the disputed domain name in bad faith.
The Respondent uses the disputed domain name with a website that prominently displays the Complainant’s GRUNDFOS trademark and images of the Complainant’s water pumps and that offers those pumps for sale. The disputed domain name combines the Complainant’s trademark with the geographical term “Vietnam” which can be understood by Internet users as the domain name of the Complainant’s official distributor or affiliate in that country. The Respondent is not cooperating in any way with the Complainant but this is not disclosed on the website to which the disputed domain name resolves. This all gives the impression that the website is approved by, or affiliated with, the Complainant, when it is not. Given these circumstances and the findings in Section 6.2B above, the Panel considers that the Respondent’s use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: April 22, 2018
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