Grundfos A/S -v- Chesterfiels Pumps [2003] DRS 876 (8 April 2003)

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The Complaint is dated 20 February 2003 and was lodged with Nominet on 21 February 2003. Nominet validated the Complaint and notified the Respondent of the Complaint by letter dated 27 February 2003, informing the Respondent that it had until 21 March 2003 to respond to the Complaint. The Respondent failed to respond. Mediation not being possible in those circumstances, Nominet so informed the Complainant on 25 March 2003.

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 1 April 2003, 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.

The Respondent has failed to submit a Response to Nominet in time in accordance with 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.

Grundfos A/S of Bjerringbro, Denmark (“the Complainant”) is a well known producer of pumps and accessories. It is the proprietor of world wide registrations of the word mark GRUNDFOS for inter alia pumps. The UK registration number 856108 for inter alia pumps in Classes 7 and 9 dates back to November 1963. The Complainant’s business in the UK is conducted through its UK subsidiary, Grundfos Pumps Limited.

On 21 October 1999 Chesterfiels Pumps of Tupton, Derbyshire (“the Respondent”) registered the Domain Name grundfospumps.co.uk (“the Domain Name”). The Domain Name does not connect to an active internet facility. Visitors to www.grundfospumps.co.uk find themselves at the Easyspace home page.

On 10 December 2002 the Complainant’s trade mark attorney wrote to the Respondent seeking transfer of the Domain Name. On 26 December 2002 the Respondent’s administrative contact, Christopher Brecknell, emailed the Complainant’s trade mark attorney stating that the Domain Name “can be made available to your client for £1000 plus VAT”.

On 31 January 2003 the Complainant’s trade mark attorney responded stating that the Complainant was willing to reimburse the Respondent its registration costs. Nothing further was heard from the Respondent.

The Complainant points to its registered trade mark GRUNDFOS which is registered for pumps and points also to the name of its UK subsidiary, Grundfos Pumps Limited. 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 fact that the Respondent, by its corporate name, is clearly knowledgeable of the pumps industry and must be well aware of the Complainant and its trade mark. It points also to the fact that the Domain Name has never been used to connect to an active internet facility and that when approached by the Complainant’s trade mark attorney, the Respondent simply offered to sell the Domain Name for £1000 plus VAT.

The Complainant states that it knows of no reason why the Respondent could be said to have any justification for registering the Domain Name.

Additionally, the Complainant contends that the circumstances suggest that on the balance of probabilities the Respondent registered the Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out of pocket costs directly associated with the Domain Name.

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).

Plainly the Complainant has trade mark rights in the word mark GRUNDFOS which is registered for, inter alia, pumps. In addition, it is likely to have unregistered rights in the name of its UK subsidiary, Grundfos Pumps, but for present purposes it is sufficient for the Complainant simply to rely on its registered trade mark rights.

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 and the word “pumps” which as indicated is the product category for which the trade mark is registered.

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

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. There being no suggestion that the Domain Name is in use in any ordinary active sense and/or that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant ‘factors’ in paragraph 3 are to be found in subparagraph i, which reads as follows:

“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. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;”

The evidence of the Complainant, which has not been contradicted by the Respondent and which discloses no communication from the Respondent save for an offer to sell the Domain Name for a price well in excess of what is likely to be the Respondent’s relevant out-of-pocket costs, means that the prime candidate is to be found under sub-paragraph A above.

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. They all relate to use of the Domain Name and, as the Complainant contends, there is no evidence before the Panel of any actual active use of the Domain Name.

In the result, the Expert is satisfied on the balance of probabilities that the Respondent 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 is therefore, in the hands of the Respondent, an Abusive Registration.

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, grundfospumps.co.uk, be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Grundfos A/S -v- Chesterfiels Pumps [2003] DRS 876 (8 April 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/876.html Cite as: [2003] DRS 876