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Grundfos A/S v. Orion Web [2005] GENDND 1477 (3 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. Orion Web

Case No. D2005-0618

1. The Parties

Complainant is Grundfos A/S with its principal place of business in Bjerringbro, Denmark.

Respondent is Orion Web (sic), with its principal place of business located in Eldoret, Kenya.

2. The Domain Name and Registrar

The domain name under dispute is <grundfospump.com> (the “Domain Name”).

The registrar of the domain name under dispute is Intercosmos Media Group, Inc. dba directNIC.com (“Intercosmos” or the “Registrar”), with business address in New Orleans, Louisiana, USA.

3. Procedural History

On June 14 and June 20, 2005, Complainant submitted its Complaint through e-mail and hardcopy, respectively, with the required filing fee for a single-member Panel, to the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center (the “WIPO Center”), in accordance with the Uniform Domain Name Dispute Resolution Policy (the “Policy”) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“WIPO’s Supplemental Rules”).

An Acknowledgment of the Receipt of Complaint was sent to Complainant by the WIPO on June 16, 2005.

On June 16, 2005, WIPO sent a “Request for Registrar Verification” via email to the Registrar requesting a confirmation that Intercosmos had received a copy of the demand; that the domain name under dispute is registered with Intercosmos; that Respondent is the current registrant of such domain name; full contact details available under the WHOIS database; that the Policy applies to the domain name at issue; that the domain name <grundfospump.com> will remain locked during the pending administrative proceeding; that the specific language of the registration agreement as used by the registrant for the registration of the <grundfospump.com> domain name, and that the Registrar indicate whether the domain name registrant has submitted in its registration agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the domain name <grundfospump.com>. In connection with the above, on June 16, 2005, WIPO received via e-mail from Intercosmos the “Registrar’s Verification”, confirming the information requested; that the Respondent is the person recorded as registrant; and detailing the information corresponding to the administrative and technical contact data.

On June 23, 2005, WIPO completed a “Formal Requirements Compliance Checklist”. It is worth mentioning that the undersigned Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and WIPO’s Supplemental Rules.

On June 23, 2005, WIPO properly sent via e-mail, and a hardcopy through express mail to Respondent and to its registered administrative contact, technical contact, zone contact and billing contact, a “Notification of Complaint and Commencement of Administrative Proceedings” enclosing copy of Complainant’s Complaint and indicating July 13, 2005, as deadline to submitting the corresponding response. Furthermore, hardcopy of such Complaint, as confirmed by Complainant, was also previously sent by Complainant to Respondent via courier, as provided by paragraphs 3(b)(xii) of the Rules and 4(a) of WIPO’s Supplemental Rules.

On July 14, 2005, WIPO sent via e-mail to the Respondent, with copy to Complainant, a “Notification of Respondent Default” confirming that Respondent has failed to comply with the deadline to submit its response, and therefore that a single panelist shall be appointed as proposed by the Complainant in its Complaint.

On July 15, 2005, the undersigned signed and sent to WIPO, a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.

On July 21, 2005, WIPO sent to Complainant and Respondent a “Notification of Appointment of Administrative Panel and Projected Decision Date”, appointing Pedro W. Buchanan Smith as Sole Panelist and scheduling August 4, 2005, as the date for issuance for the Panel’s decision, notifying the above pursuant to paragraphs 6(f) and 15(b) of the Rules. On the same date, WIPO transferred the case file to the Sole Panelist.

This Panel further considers that the Complaint was properly notified to the registered domain-name holder, the administrative contact, technical contact, zone contact and billing contact as provided for in paragraph 2(a) of the Rules.

The Panel has not received any further requests from Complainant or Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.

The language of the proceeding is English, pursuant to paragraph 11(a) of the Rules.

4. Factual Background

According to the information provided by the Complainant, and due to the fact that the same was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:

The Complainant Grundfos A/S is a company oriented to the manufacturing of water pumps. The Complainant is part of the Grundfos Group established in 1945. The Grundfos Group is one of the largest producers of circular pumps in the world, producing more than 10 million pumps per year. The Grundfos Group is represented by more than 50 companies around the world. The Complainant trades under the well-known company name and trademark GRUNDFOS.

The GRUNDFOS trademark is registered worldwide, including countries such as Denmark and Kenya. Complainant obtained its first “GRUNDFOS” trademark registration in Denmark in 1946, and in Kenya in 1968, prior to Respondent’s registration of the domain name <grundfospump.com> which was created on January 26, 2005, as indicated by Intercosmos’ WHOIS database.

In support of its Complaint, Complainant submitted copies of the following Trademark Registrations:

(a) World Trademark GRUNDFOS, registered with the Danish Patent and Trademark Office under registration Number VR 01.968 1946, on December 14, 1946, to protect products comprised within class 7 and 11, with application filing date on November 8, 1946, appointing Grundfos A/S, as the sole and exclusive listed owner;

(b) World Trademark GRUNDFOS, registered with the Danish Patent and Trademark Office under registration Number VR 1968 02852, on October 25, 1968, to protect products comprised within class 9, with application filing date on June 12, 1967, appointing Grundfos A/S, as the sole and exclusive listed owner, and

(c) World Trademark GRUNDFOS, registered with the Kenya Industrial Property Office under registration Number 12631, on January 3, 1968, to protect products comprised within class 7 such as pumps, valves, cleaning machines; filters being parts of engines, motors or of machines; purifying machines, machine tools, air compressors (machines) and hydraulic and pneumatic actuating mechanisms, with application filing date on September 28, 1964, appointing Grundfos Bjerringbro Pumpefabrik A/S, as the sole and exclusive listed owner.

The Complainant operates websites promoting its products and services, such as “www.grundfos.com”, which received approximately 83,500 visitors in April 2005.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name <grundfospump.com>, registered by Respondent, is confusingly similar to the GRUNDFOS trademark, which is Complainant’s well-known trademark. The above, due to the fact that the characteristic part of the domain name <grundfospump.com> is “GRUNDFOS” considering the term “PUMP” as the description of the product sold by the Complainant under the trademark Grundfos. In this order of ideas, Complainant argues that the mere addition of the generic term “PUMP” is clearly insufficient to avoid a likelihood of confusion between the domain name <grundfospump.com> and the trademark GRUNDFOS.

The Complainant argues that, derived from the fact that the Respondent is actively offering the domain name <grundfospump.com> for sale both to the public in general via the website under the domain name at issue and specifically to the Complainant in the e-mail communication dated April 25, 2005, the Respondent’s sole reason for the registration of the domain name <grundfospump.com> is to profit from the sale of the same.

In addition to the above, regarding the bad faith of the Respondent, the Complainant alleges that apparently, the Respondent operates a business based on making profits on sales of domain names, making reference to well-established trademarks, at a price substantially higher than the registration fees.

Lastly, Complainant has requested under paragraph 4(a) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.

B. Respondent

Respondent failed to reply to Complainant’s contentions.

6. Discussion and Findings

The Panel considers that the Respondent, by registering the disputed domain name with Intercosmos (an Internet Corporation for Assigned Names and Numbers’ –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of Intercosmos’ Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and policy, and this Panel has jurisdiction to decide this dispute.

Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondent’s domain name registration services may be suspended, cancelled or transferred.

The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.

Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.

In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.

Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent 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 domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This Panel finds that Respondent’s domain name is confusingly similar to Complainant’s very well known GRUNDFOS trademarks. Complainant’s trademarks registration have been made significantly before the date of creation of Respondent’s domain name <grundfospump.com>.

In addition, the domain name <grundfospump.com> is wholly comprised within Complainant’s trademarks “GRUNDFOS”, with the addition of the word “PUMP”, which particularly increases the impression of a connection with the Complainant, as its business is oriented to water pumps. Furthermore, the addition of the other element “.COM” is not a distinctive element, it is just a necessary element required for the registration of a first level domain name.

B. Rights or Legitimate Interests

Furthermore, this Panel finds in general from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with Complainant’s trademarks “GRUNDFOS” neither with the domain name under dispute as it has not used or prepared to use the <grundfospump.com> domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that 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 trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy.

C. Registered and Used in Bad Faith

The Panel also finds that Respondent has used the domain name in bad faith, in particular but without limitation, pursuant to paragraph 4(b)(i) of the Policy, in view that the Respondent registered the domain name with the purpose of seeking an unjustifiable economic benefit (both from the public in general, via the website under the domain name at issue, and from the Complainant, as evidenced in this proceeding) in exchange for the transfer of the domain name; and therefore has made a bad faith use of the domain name. This Panel further finds, from the information and facts that were analyzed, and from the lack of evidence to the contrary, that the registration of the domain name <grundfospump.com> by the Respondent is in bad faith.

Lastly, it is hereby noted that no settlement has been reached by the Parties and made known to this Panel prior to the rendering of this Panel’s decision, which may eventually affect or give ground for termination of this administrative proceeding as provided for under paragraph 17(a) of the Rules, nor is this Panel aware of the existence or initiation of any other type of legal proceedings before a court of competent jurisdiction for independent resolution, regarding the domain name dispute as contemplated under paragraph 4 (k) of the Policy.

7. Decision

Therefore, and in consideration to the Complaint’s compliance with the formal requirements for this domain dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in paragraphs 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides:

(1) that the domain name <grundfospump.com> registered by Respondent is confusingly similar to Complainant’s trademarks GRUNDFOS;

(2) that Respondent has no rights or legitimate interests over the <grundfospump.com> domain name; and

(3) that the <grundfospump.com> domain name has been registered and is being used in bad faith by the Respondent.

Therefore, the Panel requires, pursuant to what is provided for under paragraphs 3(c) and 4(i) of the Policy, that the domain name <grundfospump.com> be transferred to the Complainant Grundfos A/S.

Pedro W. Buchanan
Sole Panelist

Dated: August 3, 2005