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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Grundfos A/S v. Manila Industries Inc.

Case No. D2006-1295

 

1. The Parties

The Complainant is Grundfos A/S of Denmark, represented by Delacour Law Firm, Denmark.

The Respondent is Manila Industries Inc., United States of America, represented by Gary Wayne Tucker, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <grundos.com> is registered with Compana LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2006. On October 9, 2006, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On October 20, 2006, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2006. The Response was filed with the Center on November 14, 2006.

The Center appointed James A. Barker as the Sole Panelist in this matter on November 22, 2006. 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.

On November 20, 2006, the Center received a supplementary filing from the Complainant. Neither the Policy nor the Rules make provision for supplemental filings. Paragraph 12 of the Rules provides that the Panel, in its sole discretion, may request further statements or documents from the parties. The Panel has not done so in this case. So the Panel did not consider the supplemental filing.

 

4. Factual Background

The Complainant is part of the Grundfos Group established in 1945. The Grundfos Group manufactures circular pumps. It is one of the largest manufacturers of circular pumps in the world. It is represented by more than 50 companies around the world.

The Complainant trades under the name GRUNDFOS, and is the owner of a corresponding registered mark. The Complainant attached evidence of the registration of that mark in Denmark, among others.

The Complainant operates a website at “www.grundfos.com”.

The Respondent registered the disputed domain name on February 4, 2006. The website to which the disputed domain name refers, at least at some stage, contained links to other websites includes links to products related to those offered by the Complainant. At the date of this decision, the disputed domain name seemed not to revert to an active website.

 

5. Parties’ Contentions

A. Complainant

The following contentions are summarized from the Complaint.

The disputed domain name is confusingly similar to the Complainant’s well-known mark, GRUNDFOS. The disputed domain name is identical to the Complainant’s mark, except for the omission of the letter “f”.

Due to the strong visual similarity between “grundos” and “grundfos”, it is evident that the disputed domain name is confusingly similar with the Complainant’s well-known trademark GRUNDFOS. In this connection, the Complainant makes reference to Grundfos A/S v. Orion Web, WIPO Case No. D2005-0618, which characterized the Complainant’s mark as “very well-known”.

Rights or legitimate interests

The Complainant contends that the Respondent’s registration of the disputed domain name must be considered to have been done to profit from its sale and/or to use the domain name for commercial gain by attracting Internet users by creating a likelihood of confusion with the Complainant’s trademark, within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant also contends that the Respondent has no legitimate interests as a notorious cybersquatter.

Bad faith

The Complainant points out that its mark is well-known, and claims that the Respondent is intending to sell the disputed domain name. The Complainant also claims that the Respondent has demonstrated bad faith by using the disputed domain name in connection with a website that contains links to websites promoting products and services that include circular pumps.

B. Respondent

The Respondent denies the contentions made by the Complainant, as follows.

Identical or confusingly similar

The Respondent denies that the disputed domain name is identical or confusingly similar to the Complainant’s mark. The Respondent also states that:

“The Complaint’s rights are in the word ‘Grundfos’ and not in the component parts ‘grund’ and ‘fos’. The disputed domain name in this case is both a combination of terms which also has a new meaning as well as a virtual pet known worldwide.

‘Grund’ is not only German and Danish for ‘ground’ but is, in addition, a city in Switzerland, a quarter in the city of Luxembourg, and a hair care manufacturer. ‘Grund’ is a surname as well but is not the surname of the founder of ‘Grundfos’ and thus no claim can be made to any special significance of the term. ‘Grund’ absent the appendage ‘fos’ is, regardless of language, a clearly generic term.

‘Grundos’ is a combination of that term and the term ‘os’ which is commonly understood to mean ‘operating system.’ An operating system is the computer program that manages the hardware and software resources of a computer.

Since the disputed domain name is both a combination word with new meaning as well as the name of a virtual pet, there can be no confusion.”

Rights or legitimate interests

The Respondent claims that the disputed domain name incorporates a generic term, and therefore that its use of that term in connection with an advertising website gives it a legitimate interest.

“Respondent is using the disputed domain name as an advertising portal that provides access to a broad range of services. The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.”

Bad faith

The Respondent claims that the Complainant has not submitted evidence of its bad faith, but has engaged in “repeated name calling, deception, and outright lies in an attempt to influence the Panel that Respondent has operated in bad faith in this case”.

“Having demonstrated that the Disputed Domain Name is not confusingly similar to Complainant’s mark and that Respondent has a legitimate interest in the domain name, it must follow that Respondent did not register, and is not using, the disputed domain name in bad faith.”

 

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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 in bad faith and is being used in bad faith.

The Complainant must prove each of these 3 elements, which are discussed in turn below.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights in its registered mark GRUNDFOS. That much is established by the Complainant’s evidence of its registration of that mark.

It is also self-evident that the disputed domain name is not identical to that mark. The question then is whether the disputed domain name is confusingly similar to that mark. For this purpose, it is well-established that the “.com” extension is to be disregarded.

Disregarding that extension, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. The Respondent makes a number of arguments against such a finding. But those arguments do not succeed for the following reasons.

Firstly, the Respondent argues that there is no confusing similarity because the Complainant’s rights “are in the word ‘Grundfos’ and not in the component parts ‘grund’ and ‘fos’”. The Respondent argues that there are common meanings to the separate terms ‘grund’ and ‘fos’: the former, being German and Danish for “ground”, as well as a city in Switzerland, among others. The Respondent also states that “fos” has a generic meaning, although it does not indicate what that meaning is.

This is plainly a weak argument. The Complainant’s claim relates to the entirety of its mark – not component parts of it. Although it seems to defeat its own argument, the Respondent itself acknowledges that the Complainant’s rights are in the entire term “grundfos” and not portions of it.

Despite this, the Respondent also appears to argue that any confusing similarity is diminished because component parts of the mark are generic. The Complainant indicates that the first element of the Complainant’s mark (“grund”) has a common meaning in German and Danish. The Complainant gives no explanation of the meaning of latter element of the mark (“fos”), despite claiming that it is “regardless of language, a clearly generic term”. How it is possible for a combination of letters to have a generic meaning - or for that matter any meaning - “regardless of language” is not explained. Even if it were explained, it is well-established in trademark law that common terms, when combined, can create sufficient distinctiveness for trademark rights to arise in the combination. It does not matter that particular components of a mark, which picked out in isolation, may have some generic meaning.

Secondly, the Respondent argues that the term “Grundos” is a combination of the term “grund” and the term “os”, the latter which is commonly understood to mean “operating system”. On this basis, the Respondent appears to argue that this combination calls to mind an entirely new meaning, which is generic and separate to the Complainant’s mark.

This is a difficult argument to swallow. The Respondent does not suggest what this ‘new meaning’ is. Neither does the Respondent suggest how there could be a meaning created by the combination of a German/Danish term in combination with an acronym of an English term. It does not appear to the Panel that there is any obvious or natural connection between the terms “grund” and the acronym “os”. If there were some related meaning, it might be expected that the Respondent’s website would have some relationship to it. But it did not. Evidence provided by the Complainant was that the Respondent’s website instead contained various links to websites associated with pumps, which is the area of the Complainant’s business.

The Respondent’s third argument is perhaps its strongest, although it is ultimately flawed.

In its third argument, the Respondent claims that “‘Grundos are also a species of Neopets. Neopets are an online virtual pet which, according to the website “www.neopets.com”, have over seventy million ‘virtual’ pet owners worldwide”. The Respondent provides evidence of a website referring to “neopets”, which includes e.g. at least one character described as “Grundos the Grundo”. The Respondent’s argument in this respect is that the disputed domain name calls to mind an entirely new meaning: relating to “neopets”. The Respondent contends that the disputed domain name cannot be found to be confusingly similar to the Complainant’s mark for this reason.

The Respondent refers for support to A & F Trademark, Inc., Abercrombie & Fitch Stores, Inc., and Abercrombie & Fitch Trading Co., Inc. v. Chad Nestor, WIPO Case No. D2003-0260. In that case, the Panel found that “abercrombie” was not confusingly similar to “aberzombie”. This finding was on the basis that, although those terms were phonetically and visually similar, there was a “vast difference in meaning” and Internet users would not therefore confuse the two.

However, the Abercrombie case did not stand for the principle that a term which brings to mind more than one meaning prevents a finding of confusing similarity. As noted in that case, the ultimate test of confusing similarity is whether a term has the potential to mislead unsuspecting Internet users. In other words, the issue is not simply whether the term at issue has more than one meaning. The Panel in Abercrombie did not find confusing similarity because the disputed domain name in that case incorporated a distinct English word (“zombie”), which was sufficient to distinguish it from the then complainant’s mark.

This is not the case here. Here, the term “Grundos” (taken as a whole) appears entirely concocted. It is not a generic English term. There is no evidence provided to the Panel that it is generic in any other language. As such, an ordinary member of the public, searching for the Complainant, would not naturally realize that the term “Grundos” has a separate meaning, unassociated with the Complainant.

The Panel finds that the disputed domain name has the potential to mislead Internet users. The Complainant’s mark and the disputed domain name are both phonetically and visually similar. The visual difference is slight, and the dominant impression is of similarity with the Complainant’s distinctive mark. The Complainant’s mark has also been used in trade for a substantial period. The Complainant is a large and substantial business, and its mark appears to be well-known in its field. As referenced by the Complainant, previous panels have found that the Complainant is “very well-known”. Being well-known, there is more likely to be confusion between the Complainant’s mark and the disputed domain name.

For all these reasons, the Panel finds that Complainant has established this first element.

B. Rights or Legitimate Interests

The Complainant makes its case in respect of this element of the Policy, by claiming that the Respondent has sought to divert Internet users as described in paragraph 4(b)(iv) of the Policy (although that paragraph is, under the Policy, more relevant to the question of bad faith). The Complainant also claims that the Respondent’s history as a cybersquatter puts it beyond having a right or legitimate interest in the disputed domain name.

The Respondent claims that it is using the disputed domain name as an advertising portal, providing access to a broad range of services. (In the latter respect though, the Panel notes that the Complainant provided a copy of the website to which the disputed domain name reverted on September 23, 2006. That website principally appeared to contain links to websites associated with pumps, being similar fields of business to that of the Complainant.)

The Respondent claims that it registers thousands of names “looking for commonly used, generic, descriptive terms to which no party has exclusive rights”. The Respondent argues that the disputed domain name includes such a generic term. However, for the reasons set out above in relation to confusing similarity, the Panel finds that the term “Grundos” is not generic or descriptive. The Respondent itself does not present any convincing evidence to support such a finding. Its only evidence is that the term is also used in association with “neopets” – which does not establish any generic association of the term.

Merely using a disputed domain name in connection with a ‘portal site’ does not establish a legitimate interest in respect of the disputed domain name. Decisions under the Policy are replete with examples of such uses by respondents who fail to establish legitimate interests. (For one of the more recent examples, see ACCOR Sociйtй Anonyme v. Digi Real Estate Foundation, WIPO Case No. D2006-1260). In this case, there is no evidence that the Respondent itself has a right or legitimate interest in the disputed domain name.

The Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b)(ii) of the Policy provides that there is evidence of bad faith where the Respondent has:

“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 [the Respondent] have engaged in a pattern of such conduct”.

This Respondent has a significant history of being unsuccessful in proceedings under the Policy, in circumstances similar to this case. See ALK-Abellу A/S v. Manila Industries Inc., WIPO Case No. D2006-1033, Group Kaitu, LLC, Darkside productions, Inc. v. Groupe Kaitu LLC aka Manila Industries, Inc., WIPO Case No. D2005-1087; Cap Gemini v. Manila Industries, Inc./Cap Gemini”, WIPO Case No. D2006-0027; KPMG International v. Manila Industries, Inc., WIPO Case No. D2006-0597; Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0714; Hummert International, Inc. v. Manila Industries, Inc., WIPO Case No. D2006-0777.

The Respondent’s response in relation to this element of the Policy is to complain of “character assassination” by the Complainant; point to some typographical errors in the Complaint regarding cases in which the Respondent has been previously involved; and point out that one case involving it is still pending, rather than being a case that would yet support finding against it. It is not necessary for the Panel to make findings in these respects. They do not directly relate to the substantive case against the Respondent, and a consideration of paragraph 4(b)(ii) of the Policy.

The Respondent’s history is sufficient to establish a finding that it has engaged in a “pattern of conduct”, within the meaning of paragraph 4(b)(ii) of the Policy. For the purpose of this paragraph, it also seems likely that the Respondent knew or ought to have known of the Complainant. This is because the Respondent’s website referred to competitors of the Complainant, in a similar field of business.

The Complainant has therefore established this third element.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <grundos.com>, be transferred to the Complainant.


James A. Barker
Sole Panelist

Dated: December 6, 2006

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-1295.html

 

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