Nominet UK Dispute Resolution Service

DRS 03666

Grundfos A/S –v- Gordon

Decision of Independent Expert

1.	Parties: 

Complainant:		Grundfos A/S
Country:		Denmark 

Respondent:		Gordon 
Country:		MT

2.	Domain Name:

grundfoss.co.uk (“the Domain Name”)

3.	Procedural Background:

The Complaint is dated 8 May 2006 and was received in full by Nominet on 12 May 2006.  Nominet validated the Complaint and notified the Respondent of the Complaint by letter dated 15 May 2006, informing the Respondent that it had until 7 June 2006 to respond to the Complaint.  The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant on 8 June 2006.

The Complainant duly paid the appropriate fee for a decision of an Expert pursuant to paragraph 8 of the Nominet UK Dispute Resolution Service Procedure (“the Procedure”).

On 27 June 2006, Tony Willoughby, the undersigned, (“the Expert”) confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality. On the same day Nominet wrote to the Expert (copies to the parties) informing the Expert that the final decision must be sent to Nominet no later than 6 July 2006. Nominet has since confirmed to the Expert that that was an error and that the due date for the decision is 11 July 2006.

4.	Outstanding Formal/Procedural Issues (if any):

The Respondent has failed to submit a Response to Nominet within the time limit set out in paragraph 5(a) of the Procedure.

Paragraph 15(b) of the Procedure provides inter alia that “if in the absence of exceptional circumstances, a party does not comply with any time period laid down in this Policy or the Procedure, the Expert will proceed to a decision on the Complaint.”

Generally, the absence of a Response from the Respondent does not in the Expert’s view entitle an expert to accept as fact all uncontradicted assertions of the Complainant, irrespective of their merit.  In this case it seems to the Expert that the probable facts speak for themselves and that it is not necessary to draw any special inferences.

In many cases, as in this one, the principal disadvantage attached to failing to respond will be the loss of an opportunity for the Respondent to demonstrate, pursuant to paragraph 4 of the Policy, circumstances tending to show that the Domain Name is not an abusive registration.  Where, as here, the Respondent has a case to answer (ie the Complainant has made out a prima facie case) and there is no answer, the Complaint must ordinarily succeed.  

5.	The Facts:

The Complainant is a well known producer of pumps and accessories.  It is the proprietor of worldwide registrations of the word mark GRUNDFOS for inter alia pumps. The UK registration, which was originally for GRUNDFOSS, dates back to 1963. In 1968 the Complainant changed its name to GRUNDFOS and the trade mark registration was suitably amended. There is a Maltese registration of GRUNDFOS which dates back to 1999.

The Nominet Whois database identifies the Respondent as Gordon, a sole trader with an address in Malta. 

On 29 December 2004 the Respondent registered the Domain Name. The Domain Name is connected to a Sedo parking page featuring links to a variety of sites relating to pumps, plumbing courses and the like.  

On 24 April 2006 the Complainant’s attorney wrote to the Respondent seeking transfer of the Domain Name.  The Respondent did not respond.

6.	The Parties’ Contentions:

Complainant:

The Complainant points to its registered trade mark GRUNDFOS, which is registered for pumps. It contends that it has rights in respect of a name or mark, which is identical or similar to the Domain Name.  

The Complainant further asserts that the Domain Name in the hands of the Respondent is an abusive registration within the meaning of paragraph 2(a)(ii) and 3(a)(1)A of the Policy.  In support it points to the following matters:

1.	The Respondent did not respond to the Complainant’s attorney’s letter. If the Respondent had any rights or legitimate interests in respect of the Domain Name, the Respondent would have responded to that letter.
2.	The Domain Name is parked on a Sedo parking page offering links to a variety of sites relating to pumps and plumbing goods and services. The Sedo website makes clear that there are commercial benefits to domain name owners who use their domain name parking service. Sedo claims that a domain name owner using the service is much more likely to sell his domain name. 

The Complainant contends that the Respondent, in so using the Domain Name, clearly registered the Domain Name primarily to sell it to the highest bidder. Moreover, the Complainant contends as follows:

“Furthermore the Respondent is illegally using the Domain Name for commercial gain by the sale of sponsored links on a website under the Domain Nameand thus infringing the Complainant’s well-known trade mark by commercially using a designation that is identical to or confusingly similar with GRUNDFOS and thereby creating a likelihood of confusion with the Complainant’s well-known trade mark.”

Respondent:

The Respondent has not responded 

7.	Discussion and Findings:

General

To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).

Complainant’s Rights

Plainly the Complainant has trade mark rights in the word mark GRUNDFOS which is registered for, inter alia, pumps.  

Absent the generic .co.uk domain suffix, which can be ignored for this purpose, the Domain Name comprises the Complainant’s registered trade mark GRUNDFOS with an additional ‘S’

The Expert is satisfied that the Complainant has rights in respect of a name or mark similar to the Domain Name.

Abusive Registration

This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines “Abusive Registration” as:-

	“a Domain Name which either:
i.	was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; OR
ii.	has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.”

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. The Complainant contends that the following passages from paragraph 3a are applicable, namely: 

i 	Circumstances indicating that the Respondent has     registered or otherwise acquired the Domain Name          (A)  primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name; 
	………. and
ii	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated by or otherwise connected with the Complainant

The Complainant contends that the Respondent registered the Domain Name primarily for the purpose of selling it to the highest bidder. Registering domain names for that purpose is not of itself an illegitimate exercise. It becomes potentially objectionable, however, when, for example, the domain name is one such as the Domain Name, a name which is both very unusual and virtually indistinguishable from the trade mark of a market leading company very well-known in its field. In such circumstances, unless there is an obvious justification for the Respondent’s choice of domain name, inevitably there has to be a suspicion that the Domain Name was registered with the trade mark owner in mind. If the purpose of registration was to sell to the highest bidder, the Respondent will have known that the highest bidder was likely to be the trade mark owner or a mischievous competitor of the trade mark owner.

The use of the Domain Name to park it on a Sedo parking page could have been motivated by a desire to improve the selling prospects as the Complainant primarily contends or it could have been to earn click-per-view revenue via the links on the parking page (a process well-explained on the Sedo website). The links on the site are advertising links selected by an agency (probably not the Respondent) as apt for the domain name in question. Accordingly, someone has looked at the Domain Name and has considered what type of advertising links would be most desirable for a visitor to www.grundfoss.co.uk. The fact that all the links are plumbing related raises the obvious inference that whoever made the selection thought that visitors to that site would be visitors looking for the Complainant. 

While it may not be possible to lay responsibility for that selection at the door of the Respondent, it does add to the suspicion that the Respondent’s selection of the Domain Name was made with the Complainant’s trade mark in mind. It also renders irresistible the proposition that visitors to the Respondent’s website are likely to be (and to have been) people expecting to visit a site of or authorised by the Complainant.

For the reasons advanced by the Complainant (see Complainant’s contentions above) the Expert is satisfied that the Complainant has made out a prima facie case that the Domain Name is, in the hands of the Respondent, an Abusive Registration.

The Respondent has not responded, which may well suggest that the Respondent has no answer to the Complainant’s case.  Moreover, the Expert has examined paragraph 4 of the Policy, which is headed “How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration” and believes it most unlikely that any of those factors are applicable here. 

For the reasons given, the Expert is satisfied on the balance of probabilities that the Respondent (i) registered the Domain Name primarily for the purposes of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out of pocket costs directly associated with acquiring or using the Domain Name and (ii) is using the Domain Name in a manner which has caused confusion of the kind described in paragraph 3a.ii. of the Policy.

In the result, the Expert finds that the Domain Name in the hands of the Respondent is an Abusive Registration.

8.	Decision:

In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name, grundfoss.co.uk, be transferred to the Complainant.

                   
         Tony Willoughby                                                                                       Date