Danfoss A/S v Vivek Anil George, PMG Group
WIPO Case No. D2022-0691
•08-04-2022
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Danfoss A/S v. Vivek Anil George, PMG Group
Case No. D2022-0691
1. The Parties
The Complainant is Danfoss A/S, Denmark, represented by Aera A/S, Denmark.
The Respondent is Vivek Anil George, PMG Group, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <danfosscompressors.com> (the “Domain Name”) is registered with
GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2022. On March 1, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 8, 2022.
The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on March 9, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was March 29, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 30, 2022.
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The Center appointed Nicholas Smith as the sole panelist in this matter on April 1, 2022. 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.
4. Factual Background
The Complainant is a Danish multinational company, established in 1933, which is involved in the design
and supply of technologies for various industries including refrigeration and air conditioning products. The
Complainant operates in over 100 countries and has 37,000 employees.
The Complainant is the owner of numerous trademark registrations for the word DANFOSS (the “DANFOSS Mark”), including a United States of America trademark registration registered on March 7, 2000, for goods in classes 7, 9, 11, and 12, with a date of first use in 1956 (Registration Number 2,325,064).
The Domain Name <danfosscompressors.com> was registered on August 26, 2019. The Domain Name resolves to a website (the “Respondent’s Website”) that reproduces the DANFOSS Mark. The Respondent’s Website states that it is “a leading distributor of compressors, compressor spare parts and other HVAC related products in UAE”. It then purports to offer compressor products, however it is unclear from the Respondent’s Website (and the Complaint does not clearly specify) whether the products offered are the Complainant’s products or the products of competitors to the Complainant. The evidence in the Complaint is that the Respondent operates a series of websites from domain names containing a trademark of well-known companies that produce compressors and compressor spare parts from which it purports to offer that entity’s compressor products.
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
that the Domain Name is identical or confusingly similar to the Complainant’s DANFOSS Mark;
that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the DANFOSS Mark, having registered the DANFOSS Mark in numerous jurisdictions, including Denmark, the United States of America, and the European Union. The Domain Name reproduces the DANFOSS Mark along with the descriptive term “compressors” that does not distinguish the Domain Name from the DANFOSS Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to create a website that diverts customers from the Complainant’s official websites, such use not being bona fide.
The Domain Name was registered and is being used in bad faith. By using the Domain Name for a website that trades off the goodwill of the Complainant and its DANFOSS Mark, the Respondent is clearly aware of the DANFOSS Mark and is using it to deceive consumers as to its affiliation with the Complainant. The
Respondent is also engaging in a pattern of conduct targeting the Complainant’s competitors. Such conduct amounts to registration and use of the Domain Name in bad faith.
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B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trademark or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trademark or service mark.
The Complainant is the owner of the DANFOSS Mark, having registrations for DANFOSS as a trademark in
the United States of America as well as in various other jurisdictions. The Domain Name incorporates the
DANFOSS Mark with the addition of the term “compressors” and the generic Top Level Domain (“gTLD”)
“.com”, which can be discounted as an essential element of any domain name.
Previous UDRP panels have repeatedly held that the addition of other terms to a wholly incorporated
trademark (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a
finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). See also The Bank of Nova Scotia v.
Whois Protection, WIPO Case No. D2007-0884; and Valero Energy Corporation, Valero Marketing and
Supply Company v. Domain Name Proxy, LLC, Navigation Catalyst Systems, Inc., WIPO Case
No. D2011-1227.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s DANFOSS Mark.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
In general, to succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be
proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate
interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the
domain name or a name corresponding to the domain name in connection with a bona fide offering of
goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain
name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the
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Complainant to register or use the Domain Name or to seek the registration of any domain name legitimate noncommercial use.
incorporating the DANFOSS Mark or a mark similar to the DANFOSS Mark. There is no evidence that the
Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the
The Respondent has used the Domain Name to operate a website to sell compressors. It is unclear on the evidence before the Panel whether the products are legitimate DANFOSS products. If the products sold on the Respondent’s Website are not genuine products produced by the Complainant, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s
DANFOSS Mark for a site selling counterfeit products (see WIPO Overview 3.0, section 2.13.1).
Even if the Respondent is offering genuine DANFOSS products from the Respondent’s Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of UDRP decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The WIPO Overview 3.0, section 2.8 summarizes the consensus views of UDRP panels in assessing claims of nominative (fair) use by resellers or distributors in the following manner:
“[…] Panels have recognized that resellers, distributors, or service providers using a domain name
containing the complainant’s trademark to undertake sales or repairs related to the complainant’s
goods or services may be making a bona fide offering of goods and services and thus have a
legitimate interest in such domain name. Outlined in the ”Oki Data test”, the following cumulative
requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark
holder; and
(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.
The ‘Oki Data test’ does not apply where any prior agreement, express or otherwise, between the parties expressly prohibits (or allows) the registration or use of domain names incorporating the complainant’s trademark.”
In this case, the Respondent’s Website does not accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Furthermore, given that the Respondent operates a number of websites
advertising its compressor products by reference to the Complainant’s competitors, it is likely, on the balance
of probabilities, that the (unbranded) products offered on the Respondent’s Website include products
produced by the Complainant’s competitors. Even in the event that the Respondent is reselling genuine
DANFOSS products from the Respondent’s Website, its use of the Domain Name for the Respondent’s
Website does not grant it rights or legitimate interests in the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put forward evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad
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faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).
for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant
who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable
consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) 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 the respondent has engaged
in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain,
The Panel finds that the Respondent was aware of the Complainant and its reputation in the DANFOSS Mark at the time the Domain Name was registered. The Respondent’s Website contains numerous references to the Complainant, including purporting to offer the Complainant’s products for sale and reproducing the Complainant’s name. Moreover, the disputed domain name itself consists of the DANFOSS Mark along with the term “compressors” that is descriptive of the Complainant’s products. The registration of the Domain Name in awareness of the DANFOSS Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent registered the Domain Name for the purposes of operating a website specifically to sell either the Complainant’s products or counterfeit products that compete with the Complainant’s products. The Respondent is using the Domain Name that is confusingly similar to the DANFOSS Mark to sell
products, be they genuine or otherwise, in competition with the Complainant and without the Complainant’s approval and without meeting the Oki Data test. Moreover, an individual viewing the Domain Name may be confused into thinking that the Domain Name refers to a website in some way connected to the Complainant.
Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the
Complainant’s DANFOSS Mark as to the source, sponsorship, affiliation, or endorsement of the
Respondent’s Website.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <danfosscompressors.com>, be transferred to the Complainant.
/Nicholas Smith/
Nicholas Smith
Sole Panelist
Date: April 8, 2022
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