WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos Holding A/S v. Farzin Karimpour

Case No. D2016-1178

1. The Parties

The Complainant is Grundfos Holding A/S of Bjerringbro, Denmark, represented by Kromann Reumert, Denmark.

The Respondent is Farzin Karimpour of Tehran, the Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <grundfos-pump.org> is registered with Realtime Register B.V. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2016. On June 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on June 23, 2016 to correct an administrative formality.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 23, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2016.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 27, 2016. 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 has registered the trademark GRUNDFOS in jurisdictions such as the United States of America (“US”), European Union (“EU”) and Denmark. The EU Trademark registration No. 006654339, registered on December 17, 2008, was submitted to the Panel together with the Danish trademark registration No. VR194601968, registered on December 14, 1946, and the US registration No. 782,042, registered on December 22, 1964. The Complainant also produced a list of its further trademark registrations, which cover the Islamic Republic of Iran.

The trademark GRUNDFOS is well-known in the field of pumps and the group to which the Complainant belongs is a leader in its field.

The disputed domain name was registered by the Respondent on January 5, 2016. The disputed domain name previously resolved to a website that offered the Complainant’s pumps for sale. The disputed domain name no longer resolves to an active website.

A cease-and-desist letter was sent by the Complainant to the Respondent on March 31, 2016, requesting the transfer of the disputed domain name. The Respondent did not respond to the letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the trademark GRUNDFOS is a well-known trademark as it has been widely used and has been recognized as such in prior UDRP decisions. The Grundfos Group is a leading manufacturer of pumps that operates 80 companies in more than 55 countries and has its products sold all over the globe under the trademark GRUNDFOS. The trademark GRUNDFOSS was first used in 1946 and was modified to GRUNDFOS in 1967. It is registered globally and 98 trademark filings were made in connection with the wordmark GRUNDFOS. The trademark itself enjoys significant goodwill and has its loyal customers. The Complainant further contends that the disputed domain name is confusingly similar to the trademark of the Complainant as the trademark GRUNDFOS is used in its entirety combined with the term “pump” and the generic Top-Level Domain “.org”. The term “pump” refers to the products of the Complainant and the suffix “.org” can be ignored when assessing confusing similarity. In fact, the Respondent attempts to create an impression of being affiliated with the Complainant.

The Complainant has never authorized the use of its trademark by the Respondent. The latter is using the Complainant’s trademark in order to create the impression of being affiliated with the Complainant. The Complainant contends that the Respondent lacks any rights or legitimate interests in the disputed domain name and that the burden of proving such rights shifts to the Respondent.

The disputed domain name was registered by the Respondent many years after the creation and the use of the trademark GRUNDFOS by the Complainant, which is a well-known trademark. Furthermore, the Respondent was using the disputed domain name for the sale of what appears to be the Complainant’s pumps. These facts indicate that the Respondent must have been aware of the Complainant’s trademark rights. The Respondent did not obtain the Complainant’s authorization prior to registering the disputed domain name or purporting to sell the Complainant’s products. It has furthermore not responded to a communication sent by the Complainant. The Respondent is attempting to attract Internet users by creating the impression of being affiliated to the Complainant and benefitting thereof for commercial gain. Therefore, the disputed domain name was registered and is being used by the Respondent in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has submitted a number of trademark registration certificates for the trademark GRUNDFOS as well as a list of its trademark registrations from around the world. The Panel is satisfied that the Complainant has established its ownership of the trademark GRUNDFOS.

The disputed domain name comprises the Complainant’s trademark GRUNDFOS combined with the generic term “pump”, which does not eliminate the confusion with the trademark GRUNDFOS. On the contrary, it gives the impression that the disputed domain name is indeed affiliated with the Complainant as it refers to its products. The disputed domain name also contains the generic Top-Level Domain “.org”, which should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that the Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark, which is, nevertheless, displayed prominently (even with the logo and registered trademark symbol) on the website at the disputed domain name.

The Respondent, who is in default, has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. In the absence of any response, the Panel believes that the Complainant has met the requirement under the Policy showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Regarding the element of bad faith, the Complainant has clearly established that the trademark GRUNDFOS is one of the most well-known trademark in the world in connection with pumps. The disputed domain name has been used to link to a website offering the Complainant’s pumps. Hence, it is obvious to the Panel that the Respondent was fully aware of the Complainant and its mark and has registered and used the disputed domain name comprising the Complainant’s mark with the aim of attracting consumers and with the intent of commercial gain. The Respondent has registered the disputed domain name and has used it in bad faith in an attempt to confuse consumers and attract them through capitalizing and free-riding on the reputation of the Complainant’s trademark.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <grundfos-pump.org>, be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: August 5, 2016