WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Grundfos Holding A/S v. Do Duy Linh

Case No. D2017-0594

1. The Parties

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

The Respondent is Do Duy Linh of Ho Chi Minh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <grundfosso1.com> (the “Disputed Domain Name”) is registered with P.A. Viet Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2017. On March 23, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 29, 2017, 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.

On March 30, 2017, the Center notified the parties in both English and Vietnamese that the language of the Registration Agreement for the Disputed Domain Name was Vietnamese. On April 1, 2017, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not reply.

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, in both English and Vietnamese, and the proceedings commenced on April 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2017. On April 28 and May 11, 2017, the Respondent sent emails to the Center.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on May 11, 2017. 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 Grundfos Holding A/S is a part of Grundfos Group established in 1945 and is owned by Poul Due Jensen Foundation. The Complainant is one of the world’s largest and leading manufacturers of pumps. The Complainant is also known for its high product quality and serves all the major pump markets in the world, except for the oil and gas industry.

The Complainant is the owner of the trademark GRUNDFOS in a number of jurisdictions, including but not limited to:

(i) European Union trademark registration No. 6654339 dated December 17, 2008;

(ii) Danish trademark registration No. VR 1946 01968 dated December 15, 1946; and

(iii) Vietnamese trademark registration No. 08869 dated August 9, 1993.

The Respondent registered the Disputed Domain Name on July 25, 2016. The website under the Disputed Domain Name is selling the products of the Complainant and other manufacturers.

As indicated in the case file, the Complainant’s attorney sent to the Respondent a cease-and-desist letter with regard to the Disputed Domain Name on September 14, 2016, in which the Complainant asked for, amongst others, a voluntary transfer of the Disputed Domain Name. However, the Respondent did not reply.

On May 11, 2017, the Respondent sent an email to the Center informing that the Respondent would let the Disputed Domain Name expired through non-renewal.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant refers to six (6) circumstances in which the Complainant’s mark can be regarded as well-known under the guidelines of Article 2(1)(a) of the Joint Recommendation Concerning Provisions on the Protection of Well-known Marks (published by WIPO in 2000) and UDRP cases including Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618 and Grundfos A/S v. Jan Svoboda, WIPO Case No. D2009-0526, and contends that the GRUNDFOS trademark is a well-known trademark.

The Complainant further contends that the Disputed Domain Name is confusingly similar to the Complainant’s trademark, as it is structurally and phonetically identical and thereby deceptively similar to the GRUNDFOS trademark and it integrates the Complainant’s registered trademark GRUNDFOS with the two letter and one number suffix, “so1” and the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant argues that evidently, neither the Disputed Domain Name nor the website is linked to the Grundfos Group. On the contrary, the Respondent’s use of the Disputed Domain Name is misleading due to the fact that the Disputed Domain Name only consists of the Complainant’s trademark and the addition of the letters “so” and the number “1” at the end of the word “grundfos” does not negate the confusing similarity encouraged by the Respondent’s complete integration of the GRUNDFOS trademark in the Disputed Domain Name. Hence, the word “grundfos” is clearly recognizable within the Disputed Domain Name.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant asserts that the trademark GRUNDFOS is a well-known trademark.

The Complainant further asserts that the Respondent is not entitled to use the trademark as the Respondent is not an authorized dealer, reseller or repairer, and the Complainant and the Respondent are not cooperating in any way. Even if the parties were cooperating, the Respondent would still be acting unlawfully using the Complainant’s trademark without the Complainant’s explicit consent.

In addition, the Complainant also submits that the content of the website under the Disputed Domain Name is clearly intended to mislead Internet users that there is a connection between the Complainant and the Respondent by arguing that (i) the Respondent’s website shows pictures of the Complainant’s products and display of the Complainant’s trademark gives the appearance that it is somehow connected to the Complainant; and (ii) there is nothing on the website, which indicates to visitors that the parties are not related.

The Complainant submits that the Respondent is falsely identifying his business as being the Complainant’s business partner or official distributor of the Complainant’s product in Viet Nam by not indicating that it is not associated with the Complainant’s business.

Finally, the Complainant contends that it has undoubtedly shown prima facie evidence of the absence of any rights or legitimate interests in the Disputed Domain Name by the Respondent, and the burden of proof thus shifts to the Respondent.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

The Complainant contends that the Respondent has registered and is currently using the Disputed Domain Name in bad faith.

The Complainant further contends that the Respondent has not obtained any consent from the Complainant prior to registration of the Disputed Domain Name and sale of the Complainant’s products and the Respondent has not replied to any letters or emails from the Complainant’s representative.

The Complainant refers to the case Grundfos Holding A/S v. weile, WIPO Case No. D2015-1748 and submits that the Disputed Domain Name incorporates the Complainant’s well-known trademark in its entirety and the appearance of the website that is associated with the Complainant is evidence that the registration of the Disputed Domain Name was in bad faith. The Complainant finds that not only was the Disputed Domain Name registered in bad faith, but it is also being used in bad faith.

The Complainant asserts that the purpose of the Respondent’s registration must clearly be to profit on the sale of the Disputed Domain Name and/or to use intentionally the Disputed Domain Name for commercial gain by attracting Internet users to the website under the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites under the Disputed Domain Name.

In view of all the above, the Complainant requests the Panel to order the Disputed Domain Name be transferred to the Complainant.

B. Respondent

The Respondent did not submit any response to the Complainant’s arguments by the due date of April 27, 2017. However, on April 28 and May 11, 2017, the Respondent sent to the Center email communications informing that the Respondent will let the Disputed Domain Name expired through
non-renewal. However, in its emails, the Respondent did not respond directly to other issues as raised by the Complainant in the Complaint. The Panel draws an inference from the aforesaid emails of the Respondent in the below discussion.

6. Discussion and Findings

A. Procedural Issues

Language of the Proceeding

The Complaint was filed in English on March 23, 2017. On March 29, 2017, the Registrar informed that the language of the Registration Agreement is Vietnamese. As the Complaint was filed in English, the Center, in its notification dated March 30, 2017, invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or a translation of the Complaint in Vietnamese, or (ii) a substantiated request for English to be the language of the administrative proceedings. On April 1, 2017, the Complainant submitted a request for English to be the language of the administrative proceedings. The Respondent did not comment on the language of the proceeding.

According to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the 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.

Similar to previous UDRP panel decisions, the Panel finds that the spirit of paragraph 11(a) is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679).

In the present case, the Panel takes into account the circumstances of the proceeding, including, but not limited to:

(i) the nationality of the Parties;

(ii) the fact that the Complainant, a Danish entity, does not appear to be able to communicate in Vietnamese; and

(iii) the fact that the Respondent is obviously capable of understanding and using English as its own website under the Disputed Domain Name is available in both English and Vietnamese version.

Hence, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation. For the purpose of easy comprehension of the Complainant (the only Party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and proceeds to its decision in English.

In accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, the Panel will examine whether each of the following three elements are present:

(i) the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following criteria: (1) that it has trademark rights, (2) that the Disputed Domain Name is identical or confusingly similar to its trademark.

Firstly, the Complainant has clearly evidenced that it has trademark rights in the GRUNDFOS trademarks long before the registration of the Disputed Domain Name. In Viet Nam, where the Respondent is located, the Complainant registered the GRUNDFOS trademark on January 4, 1993, which also well predates the registration date of the Disputed Domain Name. Further, the Complainant has sufficiently demonstrated and evidenced that it had a lengthy use of its trademark for its commercial activities, and in particular to offer all types of pumps such as centrifugal, submersible, dosing, and other pumps for both consumers and professional users worldwide.

Secondly, the Panel finds that the Disputed Domain Name comprises the Complainant’s distinctive and widely known GRUNDFOS trademark in its entirety. The difference between the Disputed Domain Name and the GRUNDFOS trademarks is the addition of the word “so” and the number “1” after the word “grundfos”. Vietnamese customers are likely to perceive “so” and “1” in combination as “số 1”, which means “number one” in English. Thus, in the Panel’s view, “so1” should be considered as a descriptive term. Consequently, the Panel finds that GRUNDFOS is the dominant element in the Disputed Domain Name and that the addition of the term “so1” does nothing to distinguish the Disputed Domain Name from the GRUNDFOS trademark, nor to dispel the risk of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Playboy Enterprises International Inc. v. Joao Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNIC.com / Domain for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation v. South East Asia Tours, WIPO Case No. D2004-0388).

Thirdly, the Panel finds, similar to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element so as to avoid confusing similarity for purposes of the Policy (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

On the basis of the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s GRUNDFOS trademark, and the first element under paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular, but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

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

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and that there is no evidence that the Respondent holds such rights.

Normally, a reseller or distributor can be making a bona fide offering of goods or services and thus have a right or legitimate interest in a domain name if its use meets the requirements described in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”):

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

The Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorized reseller (e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524). However, in this particular case, the Panel finds that the Respondent does not fulfill the Oki Data criteria.

Indeed, the Panel finds that by and even on the date of this Decision, there is no information on the website under the Disputed Domain Name presenting accurately the Respondent’s (lack of) relationship with the Complainant. In addition, by the date on which the Complaint was filed and as at the date of this Decision, on the website under the Disputed Domain Name, the Respondent sells not only pumps and other related products of GRUNDFOS, but also pump and other related products of other manufacturers, including those being the Complainant’s competitors. For these reasons, the Panel finds the Respondent’s use of the Disputed Domain Name cannot be considered a bona fide offering of goods or services under the Oki Data criteria.

Moreover, the Panel finds no evidence that the Respondent, as an individual, business, or other organization, is or has been commonly known by the Disputed Domain Name. Further, it is apparent that by selling pumps and related products via the website under the Disputed Domain Name, the Respondent has made a commercial use of the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular, but without limitation, four 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. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”.

The Panel finds that the Complainant has put forth sufficient evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not submit substantive reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel finds that the Complainant’s GRUNDFOS trademark has been registered on a worldwide basis. The Complainant’s GRUNDFOS trademark has been in use, among other countries, in Viet Nam where the Respondent resides.

The Disputed Domain Name comprises the GRUNDFOS trademark in its entirety, adding only the term “so1”, which is a Vietnamese term for “number one”. GRUNDFOS is being used in the Complainant’s GRUNDFOS trademarks and trade name, which all predate the registration of the Disputed Domain Name. “Grundfos”, which is a coined word, without any dictionary meaning, is neither descriptive nor generic in respect of any products or services.

These facts show that the Respondent did not register the Disputed Domain Name in a fortuity. The Respondent knew or should have known of the Complainant and its GRUNDFOS trademark before its registration of the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

In Section 6.B. above, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the Panel’s view, use of a domain name, to which one has no rights or legitimate interests, is very often a clear indication of use in bad faith.

Further, as discussed earlier, the Respondent is using the Complainant’s GRUNDFOS trademark in its entirety in the Disputed Domain Name. Further, the Panel finds that in addition to the adoption of the Complainant’s GRUNDFOS mark as a uniquely distinctive part in the Disputed Domain Name, the Respondent used, without permission, the Complainant’s GRUNDFOS trademark on the website, and did not disclose the actual relationship with the Complainant on that website. In the Panel’s view, this creates a likelihood of confusion with the Complainant’s mark as to sponsorship, affiliation, or endorsement of the website to which the Disputed Domain Name resolves to. Therefore, the Panel finds that the likelihood of confusion as said is an indication of bad faith use of the Disputed Domain Name (see, Philip Morris Inc. v. Alex Tsypkin, supra; The Procter & Gamble Company, Tambrands Inc. v. Reserved for Customers, MustNeed.com, WIPO Case No. D2009-0944; Aktiebolaget Electrolux v. Jose Manuel, WIPO Case No. D2010-2031).

In addition, the Panel notes the fact that the Respondent received a cease-and-desist letter from the Complainant and the Center’s notifications on the administrative proceeding against it, but did not give any substantive response. Instead, the Respondent continued to use the Disputed Domain Name until the date of this Decision. In the Panel’s view, the Respondent’s email of April 28 and May 11, 2017, informing that it would let the Disputed Domain Name expired through non-renewal, in combination with the Respondent’s continuous use of the Disputed Domain Name for an active website till the date hereof, is evidence on the Respondent’s persistence in using up all and any chance to ride on the fame of the Complainant’s mark for its commercial gain; even after it has been fully aware of its bad behavior.

With the said facts, the Panel finds that the Respondent intentionally registered and is using the Disputed Domain Name for commercial gain and that the Respondent’s use of the Disputed Domain Name is misleading consumers and confusing them by making them believe that the website is associated, fostered or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and is being used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a) of the Policy is established.

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, <grundfosso1.com>, be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: May 24, 2017