Nominet UK Dispute Resolution Service

DRS 04165

Grundfos A/S v Digi Real Estate Foundation

Decision of Independent Expert

1.	Parties: 

Complainant:	Grundfos A/S 
Country:		DK  

Respondent:	Digi Real Estate Foundation 
Country:		PA

2.	Domain Name:

grunfos.co.uk(“the Domain Name”)

3.	Procedural Background:

The Complaint was lodged with Nominet on October 31, 2006.  Nominet validated the Complaint and notified the Respondent of the Complaint on November 1, 2006 and informed the Respondent that it had 15 days within which to lodge a Response. No Response was received. On November 30, 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

Dawn Osborne, the undersigned, (“the Expert”) confirmed to Nominet that she knew of no reason why she could not properly accept the invitation to act as expert in this case and further confirmed that she knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question her independence and/or impartiality.

4.	The Facts:

The Complainant is part of the Grundfos group established in 1945. The Grundfos Group is one of the largest manufacturers of circular pumps in the world. The Complainant is the owner of registered trade marks for the name Grundfos including in Denmark Panama and the United Kingdom.

The Respondent registered the Domain Name on October 14, 2004. The Domain Name is being used to list sponsored links to web sites offering competing brands of circular pumps.

5.	The Parties’ Contentions:

Complainant:

The substance of the Complaint is as follows:

1.	The Complainant is part of the Grundfos group established in 1945. The Grundfos Group is one of the largest manufacturers of circular pumps in the world. The Grundfos mark is registered all over the world including in  Denmark Panama and the United Kingdom. The trade mark Grundfos is well known all over the world and is especially well known within the circular pump industry.

2.	The Domain Name must be considered to be confusingly similar to the Complainant’s Grundfos trade mark. The omission of the letter “d” in the Domain Name is insufficient to avoid any such confusion. 

3.	The Domain Name in the hands of the Respondent is an abusive registration. 

4.	The Respondent is a notorious cybersquatter and has been a party to a number of WIPO and NAF domain name dispute decisions. This pattern of registration and use of domain names which correspond to well known trade marks is an abusive registration under para 3 (a)(iii) of the Policy.  

5.	The Respondent registered the Domain Name on October 14, 2004. The Domain Name is being used to list sponsored links to web sites distributing competing brands of circular pumps. The Respondent is using the Domain Name to confuse consumers into thinking that the Domain Name is registered by or connected to the Complainant which is abusive under paragraph 3 (a)(ii) of the Policy.

6.	The Respondent has not answered the Respondent’s correspondence or this Complaint. 

       Respondent:

No response was received. 

6.	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 Names and, secondly, that the Domain Names, in the hands of the Respondent, are Abusive Registrations (as defined in paragraph 1 of the Policy).

Complainant’s Rights

The Complainant is the proprietor of registered trade marks for Grundfos. The Domain Name is a misspelling of the Complainant’s trade mark, omitting only one letter from the Complainant’s full name and mark. As such the Expert finds that the Complainant has rights in respect of a name or mark, which is similar to the Domain Names.

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. Potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraph i, ii and iii, which read as follows:

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;”
B.	[Intentionally omitted]
C.	“for the purpose of unfairly disrupting the business of the Complainant;”
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 or authorised by, or otherwise connected with the Complainant.”
iii”The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of the pattern.”    

The Expert is of the opinion that the Respondent’s registration and use of the Domain Name is indicative of relevant abusive conduct. 

There is no evidence of actual confusion. However, the Domain Name is a misspelling of the Complainant’s famous trade mark. The raison d’etre of such registrations is to cause at least initial interest confusion on the internet and it is widely accepted that typosquatting is a species of bad faith for the purpose of domain name proceedings. Whilst it is not a specific ground of abuse listed in the non exclusive grounds in the Policy, “typosquatting” is conduct which is, in the opinion of the panellist, abusive in itself. 

The Respondent has been the subject of at least six other WIPO or NAF domain name decisions where the registration and use of the name has been found to be in bad faith and the domain name(s) transferred away from the Respondent. Some of these are also “typosquatting” cases. This in itself would be enough to show that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of the pattern. As such the registration of the name is abusive under Paragraph 3 (a) (iii) of the Policy.

Further it appears that the registration of the Domain Name was made with a view to “renting” (albeit indirectly) the usage of the Domain Names to the Complainant’s competitor’s and/or disrupting the Complainant’s business for profit taking undue advantage of the Complainant’s goodwill and rights in the name Grundfos. As such the conduct would also appear to be abusive under sub paragraphs 3 (a) (i) (A) and (C) of the Policy. 

There is no obvious reason why the Respondent might be said to have been justified in registering the Domain Name and it has not responded to the Complaint.

Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

7.	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 Names,grunfos.co.uk be transferred to the Complainant.

21 December 2006     
 Dawn Osborne