Grundfos A/S v. Anna Beaulieu / Oversee Investments Inc.
Claim Number: FA1212001475334
Complainant is Grundfos A/S (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Anna Beaulieu / Oversee Investments Inc. (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grundfoss.us>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 10, 2012; the National Arbitration Forum received a hard copy of the Complaint on December 11, 2012.
On December 12, 2012, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <grundfoss.us> domain name is registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On December 17, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy and Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <grundfoss.us> domain name is confusingly similar to Complainant’s GRUNDFOS mark.
2. Respondent does not have any rights or legitimate interests in the <grundfoss.us> domain name.
3. Respondent registered and used the <grundfoss.us> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant owns the GRUNDFOS mark that it uses to produce centrifugal pumps and pump systems. Complainant holds a trademark registration for the GRUNDFOS mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 782,042 registered Dec. 2121964).
Respondent registered the <grundfoss.us> domain name on August 4, 2012.
Respondent is not making an active use of the <grundfoss.us> domain name and has offered to sell it to Complainant for an amount exceeding out-of-pocket costs.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
The Panel finds that Complainant’s trademark holding with the USPTO is sufficient for it to establish rights in the GRUNDFOS mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <grundfoss.us> domain name is confusingly similar to the GRUNDFOS mark, as the addition of an extra letter “s” to the mark is not sufficient to avoid a likelihood of confusion. Respondent has also added the country-code top-level domain (“ccTLD”) “.us” to the GRUNDFOSS mark, insignificant in domain name disputes. The Panel finds that the <grundfoss.us> domain name is confusingly similar to the GRUNDFOS mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to [UDRP] ¶ 4(a)(i).”); see also CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that there is no evidence that Respondent owns a trademark for “Grundfoss.” The Panel finds no other information or evidence that appears to show that Respondent owns a trademark encompassing the domain name or its individual attributes. Therefore, Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant also argues that Respondent is commonly known by the <grundfoss.us> domain name, and states that it has not authorized Respondent to use its mark. The WHOIS information identifies the disputed domain name’s registrant as “Anna Beaulieu / Oversee Investments Inc.,” which is dissimilar to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent is not currently using the disputed domain name, as the domain name is parked, and thus Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). The Panel agrees and finds Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”).
Complainant also states that Respondent, on November 7, 2012, via an un-signed e-mail, offered to sell the disputed domain name to Complainant for 5,000 Euro, an amount in excess of Respondent’s out-of-pocket expenses. The Panel notes that the offer was sent in response to Complainant’s cease and desist letter, and finds that Respondent’s willingness to sell its domain name is further evidence that it lacks rights and legitimate interests in the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered the disputed domain name for the purpose of selling the domain name registration to Complainant, as evidenced through Respondent’s offer to sell the domain name for 5,000 Euro, which constitutes bad faith under Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith).
Complainant argues that Respondent has also registered the <grundfoss.in> domain name, thus suggesting that Respondent is a serial cybersquatter. The Panel finds, however, that because Respondent’s other domain name registration has not been evaluated by a panel, that no such pattern has been established, and that Complainant has not demonstrated bad faith under Policy ¶ 4(b)(ii).
Complainant also contends that Respondent is diverting Internet users seeking information on Complainant’s goods to a commercial website through a domain name that is confusingly similar to the GRUNDFOS mark, thereby disrupting a portion of Complainant’s business. Complainant argues further that Respondent is creating a likelihood of confusion with the GRUNDFOS mark through its registration and use of the <grundfoss.us> domain name, presumably for its own commercial gain. Though Complainant provides evidence that the disputed domain name resolves to an inactive website parked with <sedo.com>, the Panel finds that Complainant does not adequately show how the disputed domain name disrupts its business or how Respondent commercially gains by its use of the disputed domain name. Therefore, the Panel declines to find bad faith under both Policy ¶¶ 4(b)(iii) and (iv).
However, the Panel finds that Respondent’s failure to make an active use of the disputed domain name does show Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grundfoss.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 21, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page