Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.
Respondent is Sergey M Doubovitskiy of Moscow, Russian Federation.
The disputed domain names <grundfos-shop.com> and <grundfosshop.com> are registered with Regional Network Information Center, JSC dba RU-CENTER in the Russian Federation.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2011. On February 21, 2011, the Center transmitted by email to Regional Network Information Center, JSC dba RU-CENTER a request for registrar verification in connection with the disputed domain names. On February 22, 2011, Regional Network Information Center, JSC dba RU-CENTER 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 March 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2011. Respondent did not submit any formal Response, but sent two informal email communications of March 31, 2011.
The Center appointed Paul E. Mason as the sole panelist in this matter on April 14, 2011. 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.
On March 31, 2011 Respondent sent an email to the Center in Russian asking for an extension of time to obtain specialized legal assistance for this case. In accordance with the Panel’s general powers under paragraphs 10 and 12 of the Rules, the Panel issued Procedural Order No. 1 in English and Russian on April 20, 2011, granting Respondent’s request for time extension until May 13, 2011 to find legal counsel and also file his Response.
On May 13, Respondent sent two more email communications in Russian to the Center. The first one contains arguments on the merits of this case. The second one asked for a further extension of time in order for the parties to try and negotiate a settlement of the case. Accordingly on May 18, 2011 the Panel issued Procedural Order No. 2 in both English and Russian requesting the Complainant’s views by May 23, 2011 regarding Respondent’s request for a further time extension to negotiate. This Order provided that if Complainant were to object to Respondent’s request for further time to negotiate, that the Panel would then proceed to issue its ruling on the merits of the case expeditiously.
On May 23, 2011 Complainant sent an email message to the Center indicating it did not wish to spend further time negotiating with Respondent and asking the Center to proceed with a ruling on the case. Accordingly, the Panel proceeds here to issue its ruling on the case.
A threshold issue is the language to be used in the proceedings. The language of the Registration Agreement of the domain names is Russian. The language of the proceedings is usually the one
used in the Registration Agreement, unless the Panel decides otherwise, see paragraph 11 (a) of the Rules, which states:
(a) 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) touches on this question. Although those panel views and cases are not binding on this Panel, this Panel does find the reasoning persuasive:
“4.3 What is the proper language of the proceeding and what are the relevant considerations in this regard?
The language of the proceeding is the language of the registration agreement, unless both parties agree otherwise, or the panel determines otherwise under paragraph 11 of the UDRP Rules.
Telstra Corporation Limited v. Telsra com /Telecomunicaciones Serafin Rodriguez y Asociados, WIPO Case No. D2003-0247, <telsra.com>, Transfer
Fondation Le Corbusier v. Monsieur Bernard Weber, Madame Heidi Weber, WIPO Case No. D2003-0251, <artlecorbusier.com> inter alia, Denial, Transfer in Part
Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668, <voguedress.com>, Transfer
Recognizing the practical need which may arise for a preliminary determination of the language of proceeding prior to their appointment, panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.
In order to preserve the panel's discretion under paragraph 11 of the UDRP Rules to determine the appropriate language of proceedings in such cases, where a complainant files a complaint in a language other than that of the registration agreement, the WIPO Center will notify both parties (in all relevant languages wherever possible) of the potential language issue, inviting the complainant to either translate the complaint or, if not submitted already, to submit a supported request (e.g., by reference to prior party communication, website language, or respondent identity) that the complaint be accepted in language filed, and that such be the language of proceedings, and similarly providing the respondent with an opportunity to comment on or object to any such language request that may be made by the complainant. If the complainant elects not to translate but rather to submit a supported language request, such request and any comments that may be received from the respondent would normally be placed before the panel for determination of the language issue upon the panel's appointment. The panel, having made such determination, would have power to order any further procedural steps (up to and including ordering the translation of the complaint) it would deem necessary. In such cases, prior to appointment and determination by the panel, the WIPO Center would (wherever possible) send its communications to the parties in "dual language" (i.e., in both the language of the registration agreement, and the language of the complaint).
Relevant decisions:
L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585, <shuuemura.com>, Transfer Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679, <cebit.com>, Transfer SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400, <swxtrader.com>, Transfer MySpace Inc. v. Will Eom, WIPO Case No. D2008-0448, <mypsace.com>, Transfer Fissler GmbH v. Chin Jang Ho, WIPO Case No. D2008-1002, <fissler.com>, Transfer Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, <shop-zappos.com>, Transfer Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583, <bbsrc.com>, Transfer”
In this case, the Center has maintained communications with the parties in both the English and Russian languages.
In strict accordance with the procedural steps described above, on March 3, 2011 the Center sent an email in both English and Russian to both parties asking them to justify their respective positions regarding the language to be used in the proceedings and giving them the options described in the above paragraphs.
In reply, Complainant sent an email message to the Center on March 4, 2011 in which it requested English to be the language of these proceedings. It based its request on its assertion that on January 11, 2011 it sent the Respondent a cease and desist letter in English, to which Respondent replied on January 20 in good English. The Panel has a copy of Respondent’s reply in English. Further, on January 31, 2011 the Complainant sent Respondent a follow-up email with the name of the person with whom Respondent could negotiate. On February 3, 2011 the Respondent asked for the contact details for this person, which Complainant asserts once again shows Respondent has a good grasp of the English language.
In this situation, we have evidence that Respondent understands English well, but no evidence that Complainant understands Russian sufficiently to avoid burdens of translation of all documents. Therefore although this Panel does understand Russian, it finds it appropriate to conduct the proceedings and write its decision in the English language.
According to the Complaint, the Grundfos Group is one of the largest manufacturers of circular pumps in the world, producing more than 10 million pumps per year. The Grundfos Group had some 15,800 employees at the end of 2009 and its net turnover exceeded USD 3 billion. The Grundfos Group is represented by over 50 companies around the world, including those in Russian Federation. It conducts business and trades worldwide under the company name and trademark GRUNDFOS. The trademark is registered globally, including in home country Denmark and in Russian Federation. Complainant registered GRUNDFOSS as a trademark for pumps as early as 1946, with GRUNDFOSS being changed to GRUNDOS in 1967. Complainant operates websites promoting its products and services on “www.grundfos.com” and received some 120,500 virtual visitors in January 2011 (“in” or “as of” January 2011 is not clear). See Complaint, paragraph 4).
According to the publically available WhoIs information, the disputed domain names were registered on December 11, 2010.
(1) The disputed domain names are confusingly similar to its trademark, which was labeled “well-known” in two previous UDRP decisions: The only differences are mere hyphens and the suffix “shop” which are insufficient to differentiate the disputed domain names from Complainant’s trademark in any meaningful way.
(2) Respondent has no rights or legitimate interests to use the disputed domain names: Complainant has made out a prima facie case in this respect by alleging lack of such interests or rights.
The burden of production then shifts to Respondent to show such rights or interests, something which Respondent has not done.
(3) Respondent’s bad faith registration and use of the domain names is illustrated by two points:
(a) Respondent has also registered other domain names which are confusingly similar to other companies’ trademarks, see Complaint, paragraphs 4 and 5.1. One of these is <wilo-shop.com> which is similar to the Wilo Group name which also manufactures pumps and pump systems; and (b) it requested “constructive negotiations” with Complainant which is a code word for attempting to sell the disputed domain names to Complainant for high profit.
(1) In a reply directed to Complainant on January 20, 2011, Respondent claims his domain names “are not identical to Complainant’s trade name (corporate name, etc.)”
(2) Respondent did not address the issue of rights or legitimate interests in the disputed domain names as such.
(3) In his January 20, 2011 email to Complainant, Respondent stated that the domain names were registered by him for personal purposes solely, and “not intending [Complainant’s] trade name for any use.”
He added that the domain names “have been registered by ordinary selection of letters”. These assertions are reiterated in his email in Russian to the Center dated May 13, 2011, along with a complaint that Complainant’s representative in Russian Federation had been placing undue pressure on him to give up the domain names. He closes by repeating his desire to negotiate a settlement with Complainant.
The findings in Daimler AG v. Whois privacy services, provided by DomainProtect LLC/Designbureau Ltd., Domain Manager, WIPO case D2010-1269, also decided by this Panel and involving the domain name <mercedes-shop.com>, are quite similar to this case.
Rather than distinguishing the disputed domain names from Complainant’s marks, the suffix “-shop” only heightens possible confusion between them, as it implies an authorized online sales outlet for Complainant’s equipment and parts.
Further, there are a myriad of UDRP cases which all find that addition of a punctuation mark such as a hyphen cannot change the perceived similarity of a challenged domain name to a complainant’s trademark.
This Panel did review and concurs with the two UDRP decisions cited by Complainant which concluded that Complainant’s trademark is well-known all over the world. See UDRP cases Grundfos A/S v. Jan Svoboda, WIPO Case No. D2009-0526 and Grundfos A/S v. Orion Web, WIPO Case No.. D2005-0618.
Therefore Panel finds the disputed domain names to be confusingly similar to Complainant’s well-known trademarks.
The Panel finds that the burden of demonstrating rights or legitimate interests did shift to Respondent. Since Respondent has offered no satisfactory evidence showing rights or legitimate interests in the domain names, and given the Panel’s findings below, in light of Complainant’s prima facie case, the Panel finds that there are no such interests.
Preponderance of UDRP decisions hold that both bad faith registration and bad faith use of the disputed domain names must be proven by a Complainant in order to prevail.
Regarding the question of bad faith registration of the disputed domain names, Complainant asserts that Respondent has registered many other domain names which are confusingly similar to other companies’ trademarks, including the <wilo-shop.com> domain name which is quite similar to the Wilo Group, a German pump company. See Complaint, paragraphs 4 and 5.1. A WhoIs search by the Panel shows that this is true, that Respondent does appear to have registered the domain name <wilo-shop.com>. In the Panel’s view, this reveals a pattern – registering domain names similar to well-known companies in the pump equipment industry and adding to the domain names the suffix “-shop”. In addition, Complainant states that Respondent has also registered the domain name <grundfosshop.ru> which is the object of a pending dispute in Russian Federation. See Complaint, para. 4.
Respondent’s asserts that he did not mean to confuse his domain names with Complainant’s trademarks and that the disputed domain names were somehow selected using random letters. This really does stretch the imagination, given the fact that both Grundfos and Wilo are such large, well-known companies in the pump equipment and service business worldwide, including in Russian Federation where Complainant lives, and that selecting these names on a random basis just happening to match the well-known trademark of Complainant, is not easy to do.
For these reasons the Panel finds that the disputed domain names were registered in bad faith by Respondent.
Regarding the question of bad faith use of the domain names, on May 26, 2011 the Panel attempted to visit websites generated by the disputed domain names. However neither domain name resolved into a website. The Panel also attempted a visit to “www.wilo-shop.com” with similar results. On January 11, 2011 Complainant sent a cease and desist letter to Respondent alleging among other things that he was using the disputed domain names for a website to promote sales of other products. However the Panel did not see any screenshots of such a website and the Complainant seems to have himself desisted from pursuing this assertion in his Complaint. All this leads the Panel to defer drawing any conclusions about the use of the disputed domain names on websites to promote competing products as a classic example of bad faith use of a domain name in this case.
One other ground on which to base bad faith use of the disputed domain names by Respondent was an offer made several times to “constructively negotiate” a settlement to this case. No numerical offer was mentioned by either side, but we do know that it was Respondent who repeatedly asked for this.
While it is not possible to infer a clear intention to extort large profit from registration of the disputed domain names only from a general offer to negotiate combined with what appears to be a current passive holding of the disputed domain names by Respondent, there is another important factor at play here which comes about by inference: why else would Respondent register domain names so similar to the well-known trademark of a large European industrial company if not to negotiate a very profitable settlement terms for sale of the domain names to the trademark holder, or to develop a website playing off the fame of Complainant’s well-known name and trademark? This is especially so when he registered two such domain names, not only one, extending a pattern begun earlier with registration of the <wilo-shop.com> domain name. For these reasons the Panel finds bad faith use of the disputed domain names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <grundfos-shop.com> and <grundfosshop.com>be transferred to Complainant.
Paul E. Mason
Sole Panelist
Dated: May 26, 2011