Grundfos A/S -v- Higgins [2003] DRS 1119 (13 September 2003)

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The Complaint in this case was lodged with Nominet UK ("Nominet") on July 11, 2003, with hard copies received in full on July 18, 2003. Nominet validated the Complaint on July 18 and notified it to the Respondent, giving him 15 days within which to lodge a Response. The Respondent failed to respond on or before August 11, 2003. On August 12, 2003 Nominet wrote to the Parties confirming that it had not been possible to achieve a resolution of the dispute by informal mediation, and advising that the dispute would be referred to an independent expert for a Decision if the Complainant paid the appropriate fee by August 27, 2003. On August 18, 2003, the Complainant paid to Nominet the appropriate fee for a Decision by an Expert pursuant to paragraph 6 of the Nominet Dispute Resolution Service Policy ("the Policy").

On September 1, 2003, the undersigned, Christopher Gibson ("the Expert"), formally confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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.

Paragraph 5a of the Procedure for the conduct of proceedings under the Dispute Resolution Service (“the Procedure”) requires the Respondent to submit a response to Nominet. In this case no such response has been received.

Under paragraph 15b of the Procedure, the Expert will proceed to a Decision on the complaint if, in the absence of exceptional circumstances, a party does not comply with any time period laid down in the Procedure or the Policy.

There is no evidence before the Expert to indicate the presence of exceptional circumstances; accordingly, the Expert will now proceed to a Decision on the Complaint notwithstanding the absence of a Response.

Paragraph 15c of the Procedure provides that “if, in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure…, the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”

In light of the absence of a Response in this case, it is necessary for the Expert to consider whether to draw any special inferences from the Respondent’s non-compliance with paragraph 5a of the Procedure. There are many reasons why a Respondent may not provide a Response and the Procedure does not require the Expert to speculate upon these. In the view of the Expert, if the Respondent does not submit a response the principal inference that can be taken is that the Respondent has simply not availed itself of the opportunity to attempt to demonstrate that the Domain Name is not an Abusive Registration. This does not affect the primary requirement upon the Complainant, on whom the burden of proof rests, to demonstrate Abusive Registration.

The Complainant is a Danish company that has been established since 1945. The Complainant is the world's largest manufacturer of circulator pumps, covering approximately 50 per cent of the world market for these pumps. It trades under the name GRUNDFOS and owns numerous registered trademarks, which consist solely of, or contain the word ‘GRUNDFOS’, throughout the world. The ‘GRUNDFOS’ trademark has been registered in the UK since 1963. The Complainant is represented in the UK by GRUNDFOS PUMPS LTD.

The Complainant operates web sites promoting its products and services at the URLs www.grundfos.com and www.grundfos.co.uk. The web site at www.grundfos.com received approximately 185,000 visitors in January 2003 and is expected to receive approximately 2.5 to 3 million visitors in the year 2003.

A Nominet WHOIS search shows that on May 31, 2001, the Respondent Tony Higgins, a private individual living in the UK, registered the Domain Name grundfos.org.uk. Throughout the relevant period in this case, it is undisputed that when the Domain Name is entered into an Internet browser the following web site appears:

However, the Complainant made reference to correspondence with the Respondent dating from November 2002 to January 2003. On November 25, 2002, the Complainant’s representative, Christian Kragelund of Chas. Hude A/S, wrote to the Respondent seeking a transfer of the Domain Name to the Complainant. The Respondent refused to hand over the Domain Name to the Complainant, but suggested he might be willing to sell the Domain Name to the Complainant for a “small fee” or exchange the Domain Name for another domain name containing the word GRUNDFOS. The Respondent claimed that the name GRUNDFOS is his gaming title. On November 28, 2002, the Complainant sent an e-mail to the Respondent requesting that he clarifies what he meant by the term “gaming title”. The Respondent replied that he used the name GRunDfoS in this case sensitive manner when he played Quake 3 and other computer games. Further, the Respondent claimed to have been using the “gaming title” for 5 years, and said that his “intentions for the registration of [the Domain Name] was so [he] could run a web site showing all of [his] interests and hobbies…..as everyone knows [him] as GrunDfoS.” The Respondent informed Mr Kragelund that he is aware of the Complainant’s products and that the Complainant is a well known pump manufacturer. In an email of December 2, 2002, the Respondent said that a computer programme had generated the name Grundfos. On December 19, 2002, Mr Kragelund informed the Respondent that the Complainant did not accept his explanation concerning the registration of the Domain Name, and requested the Respondent to assign the Domain Name to the Complainant “without compensation”. In his e-mail response, the Respondent said that he had no intention of handling over the Domain Name to the Complainant, but would consider selling it as he had paid out for the Domain Name. On January 31, 2003, Mr Kragelund wrote to the Respondent again demanding that the Domain Name be transferred to the Complainant, but this time, the Claimant offered to reimburse the Respondent for its out-of-pocket Domain Name registration costs.

The Complainant submits that the Domain Name in dispute is identical or similar to a name or mark in which it has rights and that the Domain Name in the hands of the Respondent is an abusive registration.

The Complainant makes reference to several British market surveys and industry magazines to illustrate that the Complainant is a well-known company and that its brand GRUNDFOS is a well-known name and trademark.

The Complainant contends that the Respondent knew about the rights of the Complainant at the time when the registration of the Domain Name took place. The Complainant asserts that the claim that the Respondent has been using a computer-generated “gaming title” for 5 years does not correspond to the fact that he knows about the activities of the Complainant and that the Domain Name has only been registered for about 2 years.

The Complainant further asserts that the Respondent has most likely registered the Domain Name for the purpose of selling 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.

According to paragraph 2 of the Policy, in order to succeed in this Complaint, the Complainant has to prove to the Expert that, on the balance of probabilities:

i. the Complainant has Rights (as defined in paragraph 1 of the Policy) in respect of name or mark which is identical or similar to the disputed domain name; and

ii. the disputed domain name is an Abusive Registration (as defined in paragraph 1 of the Policy).

The Complainant is the proprietor of the registered trade mark GRUNDFOS, which, as discussed above, is a brand fairly well-known in the UK and abroad.

The Domain Name grundfos.org.uk comprises the word ‘grundfos’ and the suffix ‘.org.uk’. In assessing whether or not a name or mark is identical or similar to a domain name, it is appropriate to disregard the domain suffix, which is of no relevant significance and wholly generic. The Expert therefore considers that the Complainant’s mark is very similar (and identical in the context of URL syntax) to the Domain Name.

Consequently, the Expert finds that, for purposes of the Policy, the Complainant has rights in respect of the registered trade mark GRUNDFOS, which is identical or similar to the Domain Name.

Under the second factor above, the Complainant must prove on the balance of probabilities that the disputed domain name, in the hands of the Respondent, is an Abusive Registration. An “Abusive Registration” is defined in paragraph 1 of the Policy 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 3(a) of the Policy. Those relevant to this case are discussed in turn below. Paragraph 4(a) of the Policy sets out how the Respondent may demonstrate in its Response that the domain name in issue is not an Abusive Registration. Although the Respondent has not responded, the Expert wishes to consider any evidence before it, including the Respondent’s emails referred to in the Complaint.

3(a)(i)(A): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily for the purposes of selling, renting or otherwise transferring the Domain Name 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.

The record in this case is unclear on this point. While there are grounds for at least some degree of suspicion that the Respondent, at the time of registration, registered the Domain Name for the purpose of attempting to eventually sell it on to the Complainant, the evidence is limited. The emails between the parties reflect that the Respondent has no rights in the domain name and is aware of the Claimant’s name, yet the Respondent is apparently confused into thinking that, merely because he is the registered holder of the domain name, he must be considered the “legal owner”. Unlike trade mark rights, in which the holder of a registered trade mark has ownership rights as recognised by the law, the registration of a domain name does not confer “ownership” rights, as opposed to contractual rights, and does not necessarily entitle the registrant to sell the registration on to a third party. Importantly, the contractual rights granted in the domain name registration are subject to Nominet’s Dispute Resolution Policy. While the evidence thus is limited, it does suggest that the Respondent intended to sell the registration at more than the registration cost: the Claimant offered to reimburse the registration cost to the Respondent but the record suggests that this offer was not accepted.

3(a)(i)(B): Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name as a blocking registration against a name or mark in which the Complainant has rights.

Based on the evidence submitted by the Complainant, the Expert finds that the name ‘GRUNDFOS’ is so unique, particular and well-known that it is plainly one in which the Complainant has clear and obvious rights.

The Respondent indicated, in its email to the Complainant’s representative, that GRunDFoS is his gaming title and that he intended to set up a web site showing all of his interests and hobbies. However, the Respondent has not presented any evidence showing that he has been commonly known by the name, that he is legitimately connected with a mark which is identical or similar to the Domain Name, or that he has made fair use of the Domain Name.

Furthermore, there is evidence that the Respondent was at all material times aware of the Complainant’s mark. The Expert finds it highly probable that, the fact that the Complainant would legitimately desire to register the Domain Name that is very similar to its well-known name and trademark GRUNDFOS, would have been clear to the Respondent at the time of registration. In addition, there is no evidence that the Respondent is using the Domain Name for the purpose of an active web site, nor that he has definite plans to use it for such purpose.

Consequently, the Expert finds that, on the balance of probability, the registration of the Domain Name was a blocking registration, and accepts that the Domain Name has been registered in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

The Expert therefore concludes that it has been established, on the balance of the probabilities, that the Domain Name in the hands of this Respondent must be considered an Abusive Registration.

The Expert finds that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the disputed Domain Name, in the hands of the Respondent, is an Abusive Registration. The Expert therefore directs that the disputed Domain Name (grundfos.org.uk) be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Grundfos A/S -v- Higgins [2003] DRS 1119 (13 September 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1119.html Cite as: [2003] DRS 1119

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