The Complainant is Grundfos A/S, Bjerringbro, Denmark, represented by Bech-Bruun Law Firm, Denmark.
The Respondent is Alexey Cherenkov, Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Regional Network Information Center, JSC dba RU-CENTER (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2010. On September 24, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing his contact details. On October 6, 2010, the Center sent an email communication to the Parties in relation to the language of the administrative proceeding, inviting them to state their positions on this issue. On October 8, 2010, the Complainant filed a request the proceeding to be held in the English language. The Respondent did not express any views on the issue.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn (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 October 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2010.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 12, 2010. 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.
In relation to the language of the administrative proceeding, the Panel notes that the language of the registration agreement for the Domain Name is Russian. The Complainant has submitted a request that English be the language of the proceedings, to which the Respondent has not objected. The Panel is prepared to accept Complainant’s request, especially in the light of Respondent’s lack of reaction on the issue and the circumstances of this case. The Center has at all times communicated to Respondent in both English and Russian, and it appears that no unfairness would be caused to either party if English is chosen as the language of the proceedings. Therefore, in exercise of its powers under Rules, paragraphs 10 and 11, the Panel decides English to be the language of this administrative proceeding, and all available evidence in Russian to be taken into account. 4. Factual Background
The Complainant is part of the Grundfos Group which was established in 1945. The Grundfos Group is one of the largest and leading manufacturers of high technology pumps and pump systems in the world. The Grundfos Group is represented by more than 82 companies in 45 countries around the world, including the Russian Federation. Grundfos products are also merchandised by distributors in a large number of countries. In 2009, the Grundfos Group had approximately 15,800 employees and a net turnover of more than DK 17 billion.
The Complainant trades under the GRUNDFOS name and trademark. The Complainant originally registered the name GRUNDFOSS for pumps in 1946. In 1967, the name GRUNDFOSS was changed to GRUNDFOS. The Complainant is currently the owner of many trademark registrations around the world, including the following:
- the word trademark GRUNDFOS, with registration No. VR 1968 of October 25, 1968, registered for the territory of Denmark for International classes 1-45; and
- the word trademark GRUNDFOS, with registration No. 30230 of August 30, 1965, registered for the territory of the Russian Federation for International classes 7, 9 and 11.
The Domain Name was registered on May 14, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends that its name and trademark GRUNDFOS is well-known around the world and especially within the relevant industries.
The Domain Name is identical or confusingly similar to the Complainant's GRUNDFOS trademark, as the dominant and characteristic part of the Domain Name is “grundfos”. The only difference between the Complainant's trademark and the Domain Name is the ".me" suffix, which is irrelevant for the purposes of the finding of identity or confusing similarity.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has not licensed or otherwise permitted the Respondent to use its GRUNDFOS trademark or to apply for any domain name incorporating the trademark. There is no business relationship between the Grundfos Group and the Respondent and the Respondent is not commonly known by the Domain Name.
On July 8, 2010, and on August 5, 2010, the Complainant sent cease and desist letters to the Respondent requesting the transfer of the Domain Name to the Complainant. The Respondent has not replied to the Complainant's cease-and-desists letters, and has not demonstrated any rights or legitimate interests in the Domain Name.
The Complainant submits that the Domain Name has been registered and is being used in bad faith. In certain circumstances, the passive holding of a domain name can be considered as a bad faith use, and such circumstances are present in this case. The Respondent has registered the Domain Name in 2009, and is not making use of it. The Complainants GRUNDFOS trademark was registered in 1967, and is well-known worldwide. In this situation, it is unlikely that the Respondent would be unaware of this trademark. Rather, the intention of the Respondent when registering the Domain Name must have been to profit through an illegal exploitation of the goodwill and reputation related to the Complainant's well-known company name and trademark. By using the Domain Name, identical to Complainant's trademark, the Respondent is likely to divert Internet traffic to his own website for his own commercial gain, thereby potentially depriving the Complainant of visits by Internet users.
The Complainant requests the transfer of the Domain Name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondents haves registered and is using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case.
In the event of a default, under Rules, paragraph (14)(b): “[…] the Panel shall draw such inferences therefrom as it considers appropriate.” As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent has chosen not to submit a Response. His default entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the GRUNDFOS trademarks, registered for the territories of Denmark and the Russian Federation.
It is a common practice under the Policy to disregard the ccTLDs such as the “.me” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “grundfos” element. This element is identical to the Complainant’s GRUNDFOS trademarks.
On these grounds, the Panel finds that the Domain Name is identical to trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in his defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the Domain Name, he could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in his favor.
The only information available about the Respondent is the WhoIs information, provided by the Registrar.
The WhoIs information contains no evidence of rights or legitimate interests of the Respondent in the Domain Name, which, as found above, is identical to the distinctive and well-known trademark of the Complainant. The Respondent makes no claims for having rights or legitimate interests in respect of the Domain Name and provides no explanation whatsoever for the registration and use of such a domain name. As submitted by Complainant and not denied by Respondent, the Domain Name has not been used since its registration.
In the Panel’s view, the above circumstances appear to confirm Complainant’s prima facie case. In the lack of any evidence or allegations to the contrary, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is identical to the Complainant’s GRUNDFOS trademark. At the time of the registration of the Domain Name, the Respondent has most probably been aware of the Complainant and of the significant commercial value of its trademark. The Respondent has provided no evidence of any actual or contemplated good faith use of the Domain Name and has not replied to the Complainant's warning letters. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of opportunistic bad faith. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
The Respondent appears to have passively held the Domain Name since its registration. As the Complainant’s trademark is well-known and has been registered some 45 years ago, including for the territory of the Russian Federation, where the Respondent is located, it is difficult for the Panel to conceive of any actual or contemplated active use of the Domain Name by the Respondent which would not be illegitimate if made without the consent of the Complainant. It has long been generally held in decisions under the Policy that the passive holding of a domain name that incorporates a well known trademark may represent bad faith use. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Taking into account all above, the Panel is prepared to accept that the Domain Name has been registered and used by the Respondent in bad faith. 7. Decision
For all 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.
Assen Alexiev
Sole Panelist
Dated: December 3, 2010
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