WIPO Domain Name Decision: D2006-0408

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. Kentech, Inc.

Case No. D2006-0408

1. The Parties

The Complainant is Grundfos A/S, Bjerringbro, Denmark, represented by Delacour Law Firm, Denmark.

The Respondent is Kentech, Inc., Eldoret, Kenya.

2. The Domain Names and Registrar

The disputed domain names <grundfospump.org> and <grundfospumps.org> are registered with Domain Contender, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2006. On April 3, 2006, the Center transmitted by email to Domain Contender, LLC a request for registrar verification in connection with the domain names at issue. On April 3, 2006, Domain Contender, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 18, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2006.

The Center appointed Anders Janson as the sole panelist in this matter on May 18, 2006. 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 part of the Grundfos Group, a manufacturer of circular pumps based in Denmark and established in 1945. The Grundfos Group has almost 12,500 employees and the net turnover in 2004 was DKK 12,153 millions. The Grundfos Group is represented by more than 50 companies worldwide. The South African sales office, Grundfos (Pty) Ltd., is responsible for sales in Kenya. The sales in Kenya are made by the independent distributor, Davis & Shirtliff and amounted to DKK 7,4 millions in 2004.

The Complainant’s trademark GRUNDFOS is, according to the Complainant, registered worldwide. The Complainant has trademark registrations in Denmark and Kenya;

- Registration VR 1968 02852 of GRUNDFOS, registered on June 12, 1967, in the Kingdom of Denmark for the classes 1-42.

- Registration no 12631 of GRUNDFOS, registered on January 3, 1968, in the Republic of Kenya for the class 7.

The Panel notes that the registration date of the two above-mentioned registrations predates the registration of the disputed domain names by the Respondent, which was on February 2, 2006. The Complainant furthermore operates the website, “www.grundfos.com.”

The Respondent is Kentech, Inc., with a stated address in Eldoret, Kenya. The disputed domain names do not link to a specific website but contain lists of hyperlinks to various other websites. At the Respondent’s website, “www.kenyatech.com,” the disputed domain names are offered for sale and potential bidders are asked to place bids for the disputed domain names.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The disputed domain names are identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the disputed domain names;

- The disputed domain names have been registered and are being used in bad faith; and

- The disputed domain names <grundfospumps.org> and <grundfospump.org> should be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are 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 disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The domain names in question are <grundfospumps.org> and <grundfospump.org>. The Complainant holds a number of registered trademarks of the word GRUNDFOS. The Panel finds that the Complainant established that GRUNDFOS is a well-recognized trademark and that the trademark is both distinctive and famous (see also Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618 and Grundfos A/S v. Equipment Agents, WIPO Case No. D2006-0242).

The disputed domain names contain the Complainant’s mark GRUNDFOS in its entirety, with the added suffixes “pumps” and “pump” and the generic and functional top level domain name “.org.” In determining whether a domain name and a trademark are identical or confusingly similar, the gTLDs and ccTLDs that constitute the suffix shall be disregarded. The question is therefore if the addition of the suffixes “pumps” and “pump” makes the disputed domain names dissimilar to the Complainant’s registered trademarks.

In previous UDRP decisions, panels have found that the fact that a domain name incorporates a complainant’s registered mark may be sufficient to establish identity or confusingly similarity for the purpose of the Policy (Oki Data Americas Inc v. the ASD Inc, WIPO Case No. D2001-0903 and CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273).

The Panel finds that the term “grundfos” is the distinctive part of the disputed domain names, and the generic terms “pumps” and “pump” add little to the overall impression of the disputed domain names. Internet users are very likely to assume that the addition of the word “pumps” and “pump” to the trademark GRUNDFOS signifies a website associated with the Complainant. The Panel finds that the addition of the suffix “pumps” and “pump” does not diminish the similarity between the disputed domain names and the Complainant’s trademark.

The disputed domain names must therefore be considered confusingly similar to the trademark GRUNDFOS. The Panel holds that the Complainant has established the first element of the Policy, paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent is actively offering the disputed domain names for sale, a fact that the Panel finds established.

The Complainant has furthermore asserted that the Respondent’s reason for registering the disputed domain names clearly is to profit on the sale of the domain names and that the Respondent has shown absolutely no rights or legitimate interests in the disputed domain names.

The Respondent has not filed a Response. In these circumstances, when the Respondent does not have an obvious connection with the disputed domain names, the arguments of the Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such right and legitimate interest exist. The Respondent has not demonstrated or argued that he used or prepared to use the disputed domain names in connection with a bona fide offering of goods or services or that any other rights or legitimate interests exist. Registration of a domain name in itself does not establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.

In conclusion, the Respondent has not presented any evidence of rights or legitimate interests in the disputed domain names and has no obvious connection to them. The Panel therefore holds that the Complainant has established the second element of the Policy, paragraph 4(a).

C. Registered and Used in Bad Faith

The Complainant has asserted that the Respondent’s registration and use of the disputed domain names are undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the well-known trademark GRUNDFOS and that it must thus especially be taken into account that 1) GRUNDFOS is a well-known trademark and 2) the Respondent is actively offering the domain names for sale.

Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.

Paragraph 4(b)(i) of the Policy states that a circumstance indicating bad faith is that the respondent 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 respondent’s documented out-of-pocket costs directly related to the domain name.

The Complainant has established that the mark GRUNDFOS is distinctive and famous. An Internet user searching for products provided by the Complainant is likely to visit the Respondent’s website. The Panel considers it highly unlikely that the Respondent by coincidence has registered the disputed domain names, which is different from the Complainant’s trademark only by the addition of the suffix “pumps” and “pump.”

The Panel notes that the examples of bad-faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. Under the Telstra analysis, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would not be illegitimate. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See also Salomon Smith Barney, Inc. v. Salomon Internet Services, WIPO Case No. D2000-0668.

The Panel finds it established that it clearly follows from the Respondent’s website “www.kenyatech.com” that the Respondent has registered the domain names with the only purpose of selling them, possibly to the Complainant. Even though no such attempt has been made it is clear from the Respondent’s website that the Respondent is willing to sell the domain names to the highest bidder, hence using the sale tool of auctioning away the domain names. According to this Panel, this fact is evidence that the Respondent has been acting in bad faith.

Furthermore, the Respondent has not presented any reasons, evidence or arguments of a legitimate interest in using the disputed domain names. There are no obvious reasons for the Respondent to have a legitimate use of the domain names.

The Panel therefore concludes that the Complainant has proven that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

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 names <grundfospumps.org> and <grundfospump.org> are to be transferred to the Complainant.

Anders Janson
Sole Panelist

Dated: June 1, 2006