The Complainant is Grundfos A/S of Denmark, represented by Delacour Law Firm, Denmark.
The Respondent is Allen Nazarian of Los Angeles, California, United States of America.
The disputed domain name <grundfosproducts.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2009. On January 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On January 23, 2009, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 20, 2009.
The Center appointed Ms. Francine Tan as the sole panelist in this matter on February 27, 2009. 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.
The Complainant is part of the Grundfos Group which was established in 1945. It is today wholly-owned by the Swiss company, Grundfos Holding AG and ultimately, by the Poul Due Jensen's Foundation, established in Denmark.
The Grundfos Group is one of the largest manufacturers of high technology pumps and pump systems in the world. It is represented by more than 50 companies around the world, and in the case of the United States by Grundfos Pumps Corporation. The Group has an employee count of approximately 16,500 and in 2007, its net turnover exceeded 2.2 billion Euros.
The Complainant trades under the company name and trade mark GRUNDFOS. The mark has been registered in many countries worldwide, including in the United States where the Respondent is located. The trade mark GRUNDFOS was first registered in the United States in the 1960's. The Complainant operates a website at “www.grundfos.com” at which its products are promoted.
The disputed domain name was first registered on February 1, 2008 and is currently used for a website on which a broad spectrum of products (via hyperlinks) are marketed and offered for sale. These products include pumps and pump systems originating from other manufacturers. On January 9, 2009 a cease and desist letter was sent to the Respondent but no response was received by the Complainant.
The Complainant contends that the disputed domain name should be transferred to the Complainant by the Respondent on the basis that:
(1) The domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests with respect to the domain name; and
(3) the domain name has been registered and is being used by the Respondent in bad faith.
On the issue of confusing similarity (paragraph 4(a)(i) of the Policy): the Complainant asserts that its company name and trade mark GRUNDFOS is well-known all over the world and especially within the relevant industry. Reference was made to the decision in Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618 wherein the panel therein found that the Complainant's mark was “very well-known”. As the disputed domain name consists solely of the Complainant's well-known trade mark GRUNDFOS and the generic term “products”, a likelihood of confusion between the disputed domain name and the trade mark GRUNDFOS therefore exists. Furthermore, it has been concluded in many WIPO panel decisions that the addition of “.com” or “.net” do not affect the consideration of whether the disputed domain name is confusingly similar within the meaning of paragraph 4(a)(i) of the Policy.
On the issue of whether the Respondent has rights or legitimate interests with respect to the disputed domain name (paragraph 4(a)(ii) of the Policy): the Complainant asserts that the Respondent's reason for registering the disputed domain name is for profit and this is evident from the sponsored links found on the website. The Respondent has sought to attract Internet users to the website by the use of the disputed domain name by creating a likelihood of confusion with the Complainant's trade mark GRUNDFOS as to the source, sponsorship, affiliation or endorsement of the website and the products marketed via the website. Furthermore, there is nothing that can be seen from the Respondent's activities and the website at “www.grundfosproducts.com” which supports a finding that the Respondent has rights or a legitimate interest in the disputed domain name. The Complainant has only to show prima facie evidence of the absence of any rights or legitimate interests on the Respondent's part in the disputed domain name, after which the burden shifts to the Respondent. The Respondent could have responded to the Complainant's cease and desist letter and demonstrated his rights and legitimate interests in the disputed domain name but did not do so.
On the issue of whether the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy): the Complainant asserts that this limb is satisfied by the following facts:
1. GRUNDFOS is a well-known trade mark;
2. the Respondent registered as a domain name a designation consisting solely of the Complainant's well-known trade mark with the generic term “products”; and
3. the Respondent is using the disputed domain name for commercial gain by attracting Internet users to the website under the domain name by creating a likelihood of confusion between the Complainant's trade mark and the disputed domain name with the purpose of making a profit by the sale of sponsored links to, inter alia, the websites of other manufacturers and distributors of pumps and pump systems.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order for the Complainant to be entitled to a transfer of a domain name, the following three elements have to be proved:
(i) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is clear from the facts of this case that the Complainant has both registered and unregistered rights in the trade mark GRUNDFOS. The only difference between the GRUNDFOS mark and the disputed domain name is the addition, in the domain name, of the descriptive term “products” and the gTLD suffix “.com”. The Panel finds that the addition of the word “products” to the disputed domain name compounds the likelihood of confusion, since the addition of this descriptive word serves to indicate to Internet users that what one can expect to find from the website “www.grundfosproducts.com” are the products of the Complainant. (See e.g. Alamo Rent-A-Car Management., LP v. Lorna Kang, WIPO Case No. D2003-0536 where the domain name <alamocarrental.com> was found to be confusingly similar to the complainant's mark ALAMO for car rental services). Further, it is a well-established principle that the existence of the gTLD suffix “.com” in the domain name has no relevant distinguishing function.
The Panel accordingly holds that the Respondent's domain name is confusingly similar to the Complainant's GRUNDFOS trade mark and that the first requirement of the Policy is satisfied.
As regards paragraph 4(a)(ii) of the Policy, there appears to be nothing which would support a finding by the Panel that the Respondent had rights to or legitimate interests in the disputed domain name. There is no evidence that (i) the Respondent's use of the disputed domain name was made in connection with a bona fide offering of goods or services; or (ii) that he has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or (iii) that he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
It appears from the Respondent's website that it displays sponsored links to numerous third-party websites offering a wide variety of goods including those which compete with those offered by the Complainant. The Panel considers that the Respondent's manner of use of the disputed domain name has not been fair or bona fide. As previously held by other WIPO panels, this Panel finds that the Respondent's use of the domain name incorporating the Complainant's well-known mark to sell or promote the goods of other competitors constitutes evidence of lack of rights or legitimate interests in the domain name.
The Panel accordingly finds that the Complainant has established a prima facie case that the Respondent has no rights to or legitimate interests in the disputed domain name, and the Respondent has not rebutted the Complainant's contentions. The second requirement of the Policy is therefore satisfied.
Following from the discussion above, the Panel considers that the Respondent is using the disputed domain name to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website and the products marketed via the website, for commercial gain. In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence that the disputed domain name was registered and is being used in bad faith.
In the circumstances, the Panel concludes that the disputed domain name was registered and is being used in bad faith. The third requirement of the Policy is therefore satisfied.
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 <grundfosproducts.com> be transferred to the Complainant.
Francine Tan
Sole Panelist
Dated: March 10, 2009