ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Grundfos Holding A/S v. George Yu Case No. D2024-2474 1. The Parties The Complainant is Grundfos Holding A/S, Denmark, represented by Patrade Legal ApS, Denmark. The Respondent is George Yu, United States of America (“United States” or “US”). 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2024. On June 18, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on the same day. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2024. The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on August 9, 2024. 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
page 2 Rules, paragraph 7. 4. Factual Background The Complainant is a company based in Denmark and owns the GRUNDFOS trademark around the world, used for pumps, heating apparatus, and related services. The mark is thus generally registered in relation to goods in Classes 7, 11, and services in Class 37. The Complainant owns the European Union Trade Mark No 006654339 for GRUNDFOS in relation to the abovementioned classes registered on December 17, 2008; US trademark No 782042 for Goods and Services in Class 7 registered on December 22, 1964; and United Kingdom trademark No UK00000856108 for Goods and Services in Classes 7, 9, 11 registered on August 17,1963. The legitimate website referencing the Complainant’s American activities is “www.grundfos.com/us.” The disputed domain name was registered on January 29, 2024. The Complainant alleges that it has been used by the Respondent for sending phishing emails asking for the Complainant’s client’s financial details. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that as the trademark GRUNDFOS is used in the disputed domain name accompanied by “-us”, which indicates that the disputed domain name is a section of the Complainant’s business specifically related to the United States, there is an obvious likelihood of confusion. The Complainant also asserts that its trademark GRUNDFOS is one of the most well-known trademarks in connection with pumps and related goods and services in the world. Further, the Complainant says that in April 2024, it became aware that the Respondent was using the disputed domain name to send emails and communicate with the Complainant’s suppliers and customers, pretending to be the Complainant. The Complainant says that the Respondent was using the name of a legitimate employee of the Complainant, which suggests that the latter undertook reconnaissance and planned this fraudulent activity. The Complainant has not authorized the Respondent to register or use any domain names containing GRUNDFOS trademarks. Therefore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the domain name. Further, the Complainant contends that the disputed domain name is being used for fraudulent activities in which the Respondent claims to be the Complainant or authorized by the Complainant with the purpose of accessing the Complainant’s bank accounts and exploiting the Complainant’s suppliers and customers. According to the Complainant this confirms that the disputed domain name is registered in bad faith. The Complainant points out that the Respondent’s email address, as indicated by the information received from the Registrar, is [personal name]grundfos@outlook.com. According to the Complainant this confirms that the Respondent is fraudulently pretending that they represent the Complainant, as the email address indicates that the Respondent is a person from the Complainant. Therefore, according to the Complainant it is obvious that the Respondent is intentionally attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
page 3 The Complainant points out that likelihood of confusion, bad faith, and absence of legitimate reasons was found in a number of other the Complainant related UDRP cases, and the trademark GRUNDFOS was found to be “one of the most well-known trademarks in connection with pumps” in one of those cases. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7). The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy (WIPO Overview 3.0, section 1.2.1). The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark GRUNDFOS for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, such as here “-us”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy (WIPO Overview 3.0, section 1.8). The GRUNDFOS trademark is recognizable within the disputed domain name. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (WIPO Overview 3.0, section 2.1). Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not advanced any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Complainant has not authorized the use of its GRUNDFOS trademark by the Respondent in any manner and the Respondent is not known by the word “grundfos” or the disputed domain name or anything similar. The Panel considers that the composition of disputed domain name carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.
page 4 Panels have held that the use of a domain name for illegal activity, here claimed phishing activity can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1). The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the Respondent has registered the disputed domain name incorporating the trademark GRUNDFOS long after that mark was registered by the Complainant, and that the GRUNDFOS trademark has an extensive reputation around the world in relation to pumps and the like. The Panel finds that the Respondent’s registration of the disputed domain name and using the disputed domain name in connection with fraudulent email scheme impersonating the Complainant constitutes bad faith under the paragraph 4(b)(iv) of the Policy. Furthermore, panels have held that the use of a domain name for illegal activity, here claimed impersonation or “phishing” constitutes bad faith (WIPO Overview 3.0, section 3.4). Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel finds that the Complainant has established the third element 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. /WiIliam A. Van Caenegem/ WiIliam A. Van Caenegem Sole Panelist Date: August 23, 2024
Full & Egal Universal Law Academy