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Grundfos A/S v. Precision Pipework Ltd, Stuart Catchpole [2004] GENDND 1172 (30 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. Precision Pipework Ltd, Stuart Catchpole

Case No. D2004-0629

1. The Parties

The Complainant is Grundfos A/S, of Bjerringbro, Denmark.

The Respondent is Precision Pipework Ltd., Stuart Catchpole, of Lowestoft, Suffolk, United Kindgom.

2. The Domain Name and Registrar

The disputed domain name <grundfospumps.com> (the “Domain Name”) is registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2004. On the same date, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the domain name at issue. On August 17, 2004, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that they had received a copy of the Complaint, that the Respondent is the current registrant and providing the relevant details, and that the language of the agreement is English. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 19, 2004. The Center verified that the Complaint together with the amendment to 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 August 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2004.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on September 16, 2004. 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 Danish company established in 1945 and today fully owned by Grundfos Holding AG, represented in the UK by its subsidiaries Grundfos Pumps Ltd. and Grundfos Manufacturing Ltd.. The company was founded by Mr. Poul Due Jensen and is today owned by “Poul Due Jensen’s foundation” (85% of the shares).

The Complainant is the largest producer of circular pumps in the world, producing more than 10 million pumps a year, covering approximately 50% of the world market for these pumps. By the end of 2003 the company had almost 12,000 employees and its earnings after tax were 579 million DKK. More information on the Complainant may be found on its websites. The Complainant promotes its products and services through its websites like “www.grundfos.co.uk” and “www.grundfos.com”. The latter receives approximately 80,000 visitors per month.

The Complainant is represented by more than 50 companies around the world, including in the UK where the Complainant is represented by Grundfos Manufacturing Ltd.

The Complainant trades under the well-known company name and trademark GRUNDFOS. That trademark is registered worldwide including in Denmark and the UK. In Denmark, the Complainant owns trademark registrations for GRUNDFOSS since 1946. In 1967 GRUNFOSS was changed to GRUNFOS. In the UK, the registration for the trademark GRUDFOSS dates back to 1963 and was changed to GRUNDFOS in 1968. The Complainant enclosed to its Complaint copies of the registration certificates for the trademark GRUNDFOS in Denmark and the UK.

The Complainant’s company name and trademark GRUNDFOS are known worldwide and are well-known in countries like Denmark and the UK, at least within the relevant industries. The Complainant has enclosed to its Complaint a survey conducted in the UK in the period June 13-15, 2003, from which it appears that the GRUNDFOS mark is known by not less than 17% of the entire English male population. Within the relevant industries a survey dating back to 2002 concluded that among pump installers 86% mentioned GRUNDFOS first when asked to name a pump manufacturer. According to the Complaint, in all relevant industries the total unaided and aided awareness of the GRUNDFOS brand varied between 79% (consulting engineers) and 99% (pump installers). The relevant report is also enclosed to the Complaint.

According to the magazine FORTUNE (January 2003), GRUNDFOS is one of the ten best European companies to work for (copy of the relevant article is enclosed to the Complaint).

From the relevant Whois it appears that the registrant of the disputed domain name is the managing director of Precision Pipework Ltd., Mr. Stuart Catchpole. The Domain Name was created on June 16, 2000. According to the Complaint, the Domain Name does not lead to an active website but redirects to the Respondent’s website at “www.pumps4all.com”.

According to what the Complainant could gather from the Respondent’s website (“www.pumps4all.com”), the Respondent is a UK based company founded in 1957. A copy of two pages downloaded from the Respondent’s website is enclosed to the Complaint. Such pages specify that the Respondent’s business includes the distribution of and services in relation to pumps and pumping equipment.

When the Complainant became aware that Respondent had registered the disputed domain name, the Complainant immediately requested that the Domain Name be transferred to the Complainant. At first, the Respondent agreed to transfer the Domain Name to the Complainant (a copy of the form for the transfer of the Domain Name from the Respondent to the Complainant, duly signed by the Respondent on October 29, 2002, is attached to the Complaint).

According to the Complaint, the form disappeared during its transmission to the relevant Registrar which, at that time was DomainDiscover. Therefore, the Complainant requested the Respondent to sign a new form. However, that second time the Respondent refused to sign the new form and claimed to have a legitimate interest in the domain name <grundfospumps.com> and on its use. According to the contents of an email sent by the Respondent on June 28, 2004, the alleged legitimate interest lies on the fact that the Complainant, in July 2000, agreed to allow the Respondent to use information from GRUNDFOS’ catalogue and price lists on Respondent’s website (Encl. 13 to the Complaint).

According to the Complainant, the Respondent, in order to assign the disputed domain name, requested to be “compensated”.

The Complainant does not want to pay any compensation to the Respondent for the transfer of the Domain Name to the Complainant, since it believes that the Respondent has no rights and interests in the Domain Name and that the registration of the Domain Name was clearly made in bad faith. Accordingly, the Complainant decided to file a Complaint under the UDRP.

5. Parties’ Contentions

A. Complainant

According to the Complaint, the domain name <grundfospumps.com> is identical to the company name of the Complainant’s English affiliated company Grundfos Pumps Ltd., since the generic top level indication .com must not be taken into consideration when the test of “identical or confusingly similar” is carried out.

Furthermore, the disputed domain name is confusingly similar to the Complainant’s well-known trademark GRUNDFOS. Indeed, the characteristic part of the Domain Name is clearly “grundfos” while “pumps” merely refers to the product the Complainant sells. The risk of confusion is strengthened by the fact that GRUNDFOS in many countries, including the UK, is a well-known mark.

The Complainant believes that the Respondent lacks any rights or legitimate interests in the disputed domain name. In the Respondent’s view, its legitimate interest arises from the fact that in July 2000 Grundfos Pumps Ltd. authorized the Respondent to use information from GRUNDFOS’ catalogues and price lists on the Respondent’s website. However, according to the Complainant, the Respondent has never been a regular distributor of the Complainant’s goods and has never purchased the pumps directly from the Complainant. The permission granted by Grundfos Pumps Ltd. does not give any right to the Respondent to use the Complainant’s company name and trademark with a view of attracting business to the Respondent’s website in order to sell pumps of brands other than GRUNDFOS and services in relation thereto (pre-sale confusion).

The Complainant further stresses that the aforesaid permission was only granted in July 2000, while the Domain Name was registered in June 2000. Therefore, it is clear that the statement that such permission grants to the Respondent rights and legitimate interests in the domain name <grundfospumps.com> is deprived of any grounds.

The Respondent’s registration of <grundfospumps.com> was undoubtedly made in bad faith with regard to the Complainant’s well-established rights to the company name and trademark GRUNDFOS. GRUNDFOS is well-known in the UK; the Respondent operates within the same industry as the Complainant; and the Respondent shortly after the registration of the Domain Name approached the Complainant.

The use of the Domain Name is in bad faith. The Respondent did not establish a website under “www.grundfospumps.com” and the only use of the Domain Name is to attract business to the Respondent’s own website at “www.pumps4all.com” with a view to selling pumps of brands other than GRUNDFOS and services in relation thereto. Accordingly, the Respondent is unduly exploiting the goodwill related to the Complainant’s company name and well-known trademark for financial gain. This constitutes a use of the Domain Name in bad faith.

Furthermore, the Respondent’s explanation with regard to the reason for registering the Domain Name is not trustworthy. On the contrary, the facts have shown that the Respondent’s real purpose in the registration of the Domain Name was to sell the Domain Name to the Complainant for a price exceeding the registration costs. Such conduct clearly constitutes a use in bad faith.

For all the aforesaid reasons, the Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Panel, in compliance with Paragraph 14 of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant claims that the disputed domain name is identical to the company name used by the Complainant’s English affiliated company Grundfos Pumps Ltd.

However, the Policy does not extend to trade names. Extension of the policy to trade names was discussed at the time of the The Second WIPO Internet Domain Name Process of 2001. The report of this Second WIPO Internet Domain Name Process recommended not to take an action in the field of trade names and ICANN has not changed the Policy in this respect.

The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s well-known trademark GRUNDFOS.

The disputed domain name merely consists of the reproduction of the Complainant’s trademark followed by the term “pumps”. The latter term makes express reference to some of the goods identified by the Complainant’s trademark in class 7 (pumps) and to the Complainant’s activity.

The mere addition of a generic term to a third party’s trademark is insufficient to avoid a likelihood of confusion between the domain name and the Complainant’s trademarks. Furthermore, when the generic word added to the Complainant’s mark is precisely a term that refers to the goods for which this mark is used, confusing similarity, rather than being removed or reduced, is inevitable (See WIPO Case No. D2001-0456 of June 6, 2001, Harrods Limited v. Peter Pierre; see also WIPO Case No. D2001-0110 of April 2, 2001, Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.).

Accordingly, the Panel finds that the first condition is met.

B. Rights or Legitimate Interests

According to Paragraph 4(a) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Since proving a negative circumstance is always difficult and burdensome, and often almost impossible, previous Panel's decisions have established that prima facie evidence of the lack of rights or legitimate interests is sufficient to shift the onus of proof from the Complainant to the Respondent.

The Complainant believes that the Respondent lacks any rights or legitimate interests in the disputed domain name.

According to the Complaint, the Respondent believes that he has legitimate interests in the Domain Name due to the fact that in July 2000 Grundfos Pumps Ltd. authorized the Respondent to use information from GRUNDFOS’ catalogues and price lists on the Respondent’s website. In Annex 13 to the Complaint, which is a copy of an email sent on June 28, 2004 from the Respondent to the Complainant’s lawyers, the Respondent stated that “… we simply purchased the web site address grundfospumps with the view to promote their products and used this platform to enable us to host dedicated websites rather than directing sales of Grundfos products to their competitors.” However, in the Complainant’s view, the Respondent is not an authorized distributor of the Complainant’s goods. The Respondent never purchased the pumps directly from the Complainant. The permission granted by the Complainant’s English subsidiary does not give any right to the Respondent to use the Complainant’s company name and trademark with a view of attracting business to the Respondent’s website in order to sell pumps of brands other than GRUNDFOS and services in relation thereto (pre-sale confusion).

Annex 13 to the Complaint includes a copy of the authorization granted to the Respondent by the Complainant’s English subsidiary. The Panel notes that such an authorization refers to the use of information concerning the GRUNDFOS pumps in the Respondent’s website. The name of the website is not mentioned in the Respondent’s letter to the Complainant’s English subsidiary. Rather, the relevant letter-head makes reference to a website at the Internet address “www.precision-pipework.co.uk”. Accordingly, the Complainant’s English subsidiary never authorized the Respondent to register a domain name confusingly similar to the Complainant’s trademark. The authorization merely referred to the use of information concerning the GRUNDFOS pumps on the Respondent’s website which, according to the letter-head on which the Respondent wrote its authorization request, was clearly supposed to correspond to the domain name <precision-pipework.co.uk>.

In light of the above, the authorization granted to the Respondent by the Complainant’s English subsidiary cannot be considered a ground to maintain that the Respondent has rights or legitimate interests in the Domain Name. The fact that the aforesaid authorization was only granted in July 2000, while the Domain Name was registered in June 2000, is a further confirmation of the above.

Under Paragraph 4(c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:

(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.

According to the Complaint, the Domain Name redirects to the Respondent’s website “www.pumps4all.com” where the Respondent sells pumps of brands other than GRUNDFOS and services in relation thereto. To exploit the renown and goodwill of a third party to attract Internet users to a website where goods in competition with those sold under the well-known trademark are offered for sale evidently cannot be considered a fair use of the Domain Name or a use in connection with a bona fide offering of goods and services.

Hence, although the Respondent used the Domain Name before any notice of the dispute, his use was not in connection with a bona fide offering of goods and services, as requested by Paragraph 4(c)(i) of the Policy. Nor is it a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark as requested by Paragraph 4(c)(iii) of the Policy.

In the absence of any contrary allegation from Respondent, the Panel finds that the above considerations are sufficient to conclude that the Respondent lacks any rights or legitimate interests in the domain name <grundfospumps.com>.

C. Registered and Used in Bad Faith

According to Article 4(a)(iii) of the Policy, the Complainant must prove that the Respondent registered and used the Domain Name in bad faith.

Article 4(b) of the Policy lists a series of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Among these circumstances are circumstances indicating that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 Respondent’s website or location.

In the Panel’s view, the circumstances described in the Complaint, and which have not been objected to by the Respondent, demonstrate that the Respondent registered and used the domain name <grundfospumps.com> in bad faith.

The Respondent was well aware of the Complainant’s trademark when it registered the Domain Name. The Complainant has provided evidence that its GRUNDFOS trademark is well-known, particularly among operators in the relevant fields. The Respondent is engaged in the field of distribution of and services in relation to pumps and pumping equipment. The Complainant is acknowledged as one of the pump manufacturers in the Respondent’s website.

Accordingly, when the Respondent registered the domain name <grundfospumps.com>, it was aware of the Complainant’s trademark and of the fact that, unless expressly authorized, the registration of a domain name including a third party’s trademark was not legitimate. It is curious that the Respondent contacted the Complainant’s subsidiary to request their permission to display information on the GRUNDFOS pumps on its website and omitted to mention that it had registered a domain name which included the Complainant’s trademark. This may be because the Respondent knew that it was not allowed to register a domain name comprising a well-known third party’s trademark. The inference that the Respondent was aware of the illegitimacy of a registration of a domain name including a third party’s well-known mark may also be drawn from the fact that when the Respondent received the Complainant’s request, he immediately agreed to assign the Domain Name to the Complainant (Annex 12).

Prior Panel decisions have held that the registration of a domain name including a third party’s well-known trademark suggests opportunistic bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, Parfums Christian Dior v. Javier García Quintas and Christiandior.net, WIPO Case No. D2000-0226).

As far as the use in bad faith is concerned, in the Panel’s view and absent any contrary statement by the Respondent, it is apparent that the Respondent registered the Domain Name in order to attract, for commercial gain, 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 Respondent’s website. As said above, the disputed Domain Name leads, through an automatic hyperlink, to the Respondent’s website at “www.pumps4all.com”, where the Respondent offers for sale many models of pumps by different manufacturers.

All these circumstances could create a likelihood of confusion in the Internet user with respect to the Complainant’s mark. Internet users could believe that there is a connection between the Complainant and the Respondent, that the Complainant sponsors the Respondent’s activity, that the Respondent is in any way affiliated to the Complainant, and/or that the latter endorses the Respondent’s website and relating activity.

The Respondent is using the website corresponding to the domain name <grundfospumps.com> for commercial gain: through its website it promotes its activity of selling pumps and performing related services. It is therefore clear that the Respondent is seeking to take advantage of the Complainant’s trademark in order to attract, for commercial gain, Internet users to its website. Accordingly, the Panel believes that the Respondent used the domain name <grundfospumps.com> in bad faith.

The Complainant further states that the Respondent’s real purpose for registering the disputed domain name is to sell the domain name for a price exceeding the registration costs and that shortly after the registration of the Domain Name, the Respondent approached the Complainant. The Panel does not feel that the Complainant’s assertions are supported by adequate evidence and therefore cannot consider the above - and particularly the fact that the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket expenses - an evidence of the registration and use of the Domain Name in bad faith.

The Complainant bases its assertion on the email the Respondent sent to the Complainant’s representatives (Annex 13) stating that “we simply purchased the website address grundfospumps with the view to promote their products and used this platform to enable us to host dedicated websites rather than directing sales of Grundfos products to their competitors. ….. we feel that the time and effort put into writing a suitable website should be compensated accordingly especially having been given written authorization to use such material. We were not under the impression that Grundfos Pumps had registered the name or had intellectual property rights over the name ‘grundfospumps’”. In the Panel’s view, the contents of this email do not prove that the Respondent is requesting a compensation for the transfer of the Domain Name in excess of its documented out of pocket expenses. It is clear that the Respondent is seeking a compensation for having promoted the Complainant’s products in its website. But the email does not say more than that. It does not indicate the amount of the compensation the Respondent is expecting, nor does it prove that there is a clear connection between the compensation requested and the transfer of the Domain Name.

With regard to the Complainant’s statement that the Respondent approached the Complainant shortly after the registration of the Domain Name, the Panel could not find, among the enclosures to the Complaint, any document supporting this statement. Therefore, the Panel takes the view that also this statement is unproved.

However, the Panel believes that, in the absence of any contrary allegation by the Respondent, the Complainant has proved that the domain name <grundfospumps.com> was registered to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant's mark, and concludes that the third element of Article 4(a) is met.

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 <grundfospumps.com> be transferred to the Complainant.

Angelica Lodigiani
Sole Panelist

Date: September 30, 2004