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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

KSB Aktiengesellschaft v. ksp pump

Case No. D2007-1483

1. The Parties

Complainant is KSB Aktiengesellschaft of Germany, represented by Beiten Burkhardt Goerdeler, China.

Respondent is ksp pump of Zhejiang, China.

2. The Domain Name and Registrar

The disputed domain name <ksbpump.com> is registered with OnlineNIC, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2007. On October 12, 2007, the Center transmitted by email to OnlineNIC, Inc. a request for registrar verification in connection with the domain name at issue. On October 17, 2007, OnlineNIC, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied 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 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 12, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on November 23, 2007. 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

Complainant in this administrative proceeding is KSB Aktiengesellschaft, a company limited by shares, incorporated under the laws of the Federal Republic of Germany with its principal place of business at Frankenthal, Germany.

Complainant is the registered owner of the trade mark KSB. The name KSB has been registered by Complainant as national trade mark in China (registration no. 174497) for pumps (class 7) and various other products such as valves and electrical motors and as international trade mark (registration no. 662585) with designation to China for pumps (class 7) and various other products such as valves and electrical equipment. Complainant is also the registered owner of various logos which contain the name KSB including the following:

– Complainant’s logo with registration no. 407021 (class 6, 7, 11, 17 for pumps, valves and related products);

– Complainant’s logo with registration no. 452821 (class 35, 37, 42 for services related to the installation and repair of pumps and valves);

– Complainant’s logo with registration no. 668571 (class 6, 7, 9, 11, 37, 41, 42 for pumps, valves, electronic equipment and related services);

– Complainant’s logo with registration no. 679050 (class 6, 7, 9, 11, 37, 41, 42 for pumps, valves, electronic equipment and related services); and

– Complainant’s logo with registration no. 809284 (class 6, 7, 9, 11, 37, 41, 42 for pumps, valves, electronic equipment and related services).

In addition, Complainant lawfully owns the registered trade mark 凯士比, which is the Chinese transliteration of the name KSB in China (registration no. 874290).

Complainant uses the KSB mark in connection with its regular business of producing and worldwide distributing pumps, pump systems, valves and related products for various industries, including its business in China.

Complainant has also registered domain names <ksb.com>; <ksbpumps.com>; <ksb-pumps.com> and <ksb.com.hk> and uses these domain names via websites to promote and advertise its manufacture and worldwide supply of pumps.

According to the information given in the relevant registrar’s WhoIs database, Respondent in this administrative proceeding is “ksp pump”, Zhejiang, China. To verify the contact information of Respondent provided in the registrar’s database, Complainant has entrusted a China private investigative agent, Sinotrust, to conduct further investigation. However, Sinotrust discovered that no company called “ksp pump” is registered in the Zhejiang Province, China and that the said contact telephone number belongs to another China company called Wenzhou Zhonghuan Information Technology Co., Ltd. Complainant has also found that notwithstanding the registration of the disputed domain name in Respondent’s name, no reference to Respondent can be found on the website with such disputed domain name. Instead, such website is being used by another China company called Beijing Osron Technology Development Co., Ltd as its official website. Beijing Osron’s business involves supply of industrial and civil pumps.

5. Parties’ Contentions

A. Complainant

Identification of the Proper Respondent

Complainant has chosen to direct this Complaint against “ksp pump”, Zhejiang, China, even though this entity is not registered with the Zhejiang Province and not Beijing Osron which is using the website “www.ksbpump.com”. Complainant’s action is based on the panel’s decision in First Data Corporation v. FIRSTDATACLIENT.COM c/o Whois IDentify Shield/Domain Administrator, First Data Corporation, WIPO Case No. D2006-0928 where the panel ruled that according to the Rules, it is clear that the proper Respondent of a domain name dispute proceeding is the registered domain name, i.e. the entity showing up in the WhoIs database search at the time of filing of the Complaint.

Identical or Confusingly Similar

Complainant contends that the disputed domain name <ksbpump.com> is confusingly similar to Complainant’s trade mark KSB. The disputed domain name consists of a combination of “ksb” and “pump” but Complainant contends that the affix “pump”, which is added after “ksb”, does not distinguish the disputed domain name from Complainant’s trade mark KSB as “pump” is a generic term. Furthermore, pumps under the brand name 凯士比 (which is the Chinese transliteration of Complainant’s name and trade mark KSB) are offered for sale by Beijing Osron at the website “www.ksbpump.com” accessed via the disputed domain name. Consequently, Complainant contends that it is very likely that the public will mistakenly assume that Beijing Orson has certain degree of association with Complainant which is widely known as a worldwide manufacturer and distributor of pumps and that the pumps offered by Beijing Orson are goods belonging to Complainant.

Complainant also contends that the disputed domain name is confusingly similar to Complainant’s domain names, in particular <ksbpumps.com>. The disputed domain name <ksbpump.com> is identical with Complainant’s domain name except that the last letter “s” was deleted. Both the disputed domain name and Complainant’s domain names <ksbpumps.com> and <ksb-pumps.com> are used in relation to identical business (supply of pumps) and on identical goods (pumps). Complainant contends that such close resemblance in the spelling of the said two domain names could well cause a customer or a potential customer to mistakenly assume that both domain names are associated and that Beijing Osron’s pumps offered at the disputed domain name have a certain degree of association with Complainant’s pumps.

Rights or Legitimate Interests

Complainant contends that neither Respondent nor the user of the disputed domain name, Beijing Osron, has any rights or legitimate interests in respect of the domain name for the following reasons:

– With regard to Respondent, Complainant contends that it has never in any way authorized Respondent to register the disputed domain name in Respondent’s or any other entities’ (such as Beijing Osron) name. Respondent has not conducted any business by using the disputed domain name and the website accessed by the disputed domain name contains no reference to Respondent but only to the domain name user, Beijing Osron. Respondent has never applied for, neither in its own nor in some other’s name, or obtained the registration of any trade marks corresponding to or similar to the domain name in dispute. Respondent has neither become commonly known by that domain name and there exist no rights or legitimate interests which Respondent could possibly claim with respect to the domain name <ksbpump.com>.

– With regard to Beijing Osron, the current user of the domain name, Complainant contends that it cannot legally claim any rights or interests in the disputed domain name. Beijing Osron is using the disputed domain name to offer supply of pumps under the brand name 凯士比. However, Complainant asserts that such promotion has never been authorized by Complainant and is a non bona fide use of the disputed domain name. Beijing Osron is not of Complainant’s dealers in China and Complainant is in no way associated or affiliated with Beijing Osron or Respondent. Complainant has never permitted Beijing Osron to use or register the disputed domain name in any possible way.

– Although a search on China trade mark register reveals that an application for the registration of KSBPUMPS was submitted on May 19, 2005, by an applicant Lin Feng who is one of the shareholders of Beijing Osron, Complainant contends that mere application for the registration of a trade mark as such would not automatically create legitimate interests under the Policy and the overall circumstances have to be considered. See BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna/com”, WIPO Case No. D2000-0847. Complainant contends that the application will not be published in all likelihood and it is in fact published, Complainant will immediately file opposition against the registration of the said trade mark.

– Complainant contends that the disputed domain name is being used for the sale of pumps and valves by Beijing Osron and this is an infringement of Complainant’s registered trade mark rights. Consequently, such use does not provide Respondent or Beijing Osron with rights or legitimate interests in respect of the domain name in disputed and does not constitute a bona fide offering of goods and services.

Registered and Used in Bad Faith

Complainant contends that both registration by Respondent and current use of the disputed domain name by Beijing Osron is made in bad faith.

Respondent has registered the disputed domain name in bad faith for the following reasons:

– Respondent failed to provide complete registration details;

– Respondent company “ksp pump” does not exist and is not registered in Zhejiang Province, China;

– By not providing true contact information, Respondent is deliberately misleading the public as to its true identity;

– The concealment of the true identity of Respondent shows that Respondent has registered the disputed domain name in bad faith.

Beijing Osron is using the disputed domain name in bad faith for the following reasons:

– Complainant contends that Respondent has allowed the use of the disputed domain name by Beijing Osron.

– Complainant contends that KSB is a well known mark in Europe and in many countries throughout the world. By virtue of Complainant’s business presence in China and Hong Kong, SAR of China, the KSB mark is also well known in China and Hong Kong, SAR of China. Consequently, Complainant contends that at the time of registration of the disputed domain name and the submission of the trade mark KSBPUMPS application, Respondent and Beijing Osron must be aware of Complainant’s business and its trade mark rights.

– Beijing Osron has represented on the website accessed by the disputed domain name that it acts as agent for sale of and post-sales supporting service of KSB pumps under the brand name 凯士比. Evidence gathered by Complainant shows that Beijing Osron is not only aware of Complainant’s existence as such, but also its knowledge of Complainant’s exact scope of business and the technical details of the pumps offered by Complainant. The conduct of Beijing Osron with regard to the website shows that Beijing intends to take advantage of Complainant’s goodwill for its own commercial gain and thus, this use of the disputed domain is made in bad faith.

– Complainant’s legal counsel has also written a cease and desist letter to Beijing Osron but acceptance of delivery of the letter has been refused on two consecutive occasions. When Complainant finally made contact with a representative of Beijing Osron, Mr. Chan, Complainant was told that Beijing Osron has not infringed Complainant’s trade mark rights and will continue to use the KSBPUMPS mark until ordered to stop by the Chinese Trade Mark Office. Beijing Osron claimed that it was acting as an agent on behalf of a Hong Kong company called KSB Industrial Group but a company search on the online database of Hong Kong Company registry, reveals that no such company exists. The conduct of Beijing Osron confirms that it is using the disputed domain name in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1 Identification of the Proper Respondent

The Panel agrees with Complainant that the proper respondent in this administrative proceeding is the registrant of the disputed domain as reflected in the WhoIs database of the registrar. Accordingly, Respondent ksp pump, Zhejiang, China, which the registrar has confirmed as the registrant of the disputed domain name, is the proper Respondent. Although records reveal that the current user of the disputed domain name is apparently a third party Beijing Osron, the Panel finds that, in the absence of evidence to the contrary, the third party use of the disputed domain name must have been done with the consent with of Respondent and accordingly, such use will be attributable to Respondent for which it is responsible.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, Complainant must establish that each of the three following elements is satisfied:

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

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

Complainant has adduced evidence to demonstrate that it has registered trade mark rights and continues to have such rights in the KSB mark in Germany and in many countries throughout the world. In particular, Complainant has adduced evidence to show that it has registered trade mark rights in the mark KSB in Hong Kong, SAR of China and Malaysia. Furthermore, Complainant is also the registered owner of the Chinese transliteration of the name KSB –凯士比 in China.

The disputed domain name consists of Complainant’s mark KSB with the addition of the word “pump” and the suffix “.com”. In assessing the degree of similarity between Complainant’s mark and Respondent’s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between Complainant’s mark and Respondent’s domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download Complainant’s pumps and valves. In this regard, it is relevant to note that Complainant promotes and advertises its pumps and valves on a worldwide basis via its domain names such as <ksb.com>; <ksbpumps.com>; <ksb-pumps.com>; and <ksb.com.hk>. The Panel finds that Complainant and its KSB mark has acquired a substantial reputation particularly in the pumps and valves market and this reputation extends beyond Germany into Asia. Consequently, the KSB mark is the distinctive and prominent portion in the disputed domain name that will attract customers’ attention. The mere addition of the word “pump” in the present case does not sufficiently distinguish Respondent’s domain name from Complainant’s mark. In fact, the Panel finds that the addition of the word “pump” in the disputed domain name suggests that the domain name is used in the course of, in relation to supply of pumps and valves and services particularly after sale services offered by Complainant to its customers and thus creates a false impression that the disputed domain name is used for the provision of products and services by or with the approval or affiliation with Complainant. Consequently, the Panel finds that the disputed domain is confusingly similar with Complainant’s KSB mark.

The Panel finds for Complainant in the first part of the test.

B. Rights or Legitimate Interests

The burden of proof on this element lies with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests to a disputed domain name, the burden of proof shifts to the respondent to rebut the complainant’s contentions.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you [Respondent] 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 trade mark or service mark at issue.

The Panel finds that Complainant has made out a prima facie showing and notes that Respondent has not provided any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name.

Based on the following reasons the Panel finds that Complainant has established a prima facie case that neither Respondent nor the Respondent–authorized third party user, Beijing Osron, has rights nor legitimate interests in the disputed domain name:

1. Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “ksbpump” in its business operations prior to notification of the present proceeding;

2. There was no evidence on the record to show that Complainant has licensed or otherwise permitted Respondent to use its trade mark or to apply for or use any domain name incorporating the trade mark;

3. There is no indication on the record that Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. In fact, evidence has been adduced by Complainant that third party user, Beijing Osron, has offered for sale on the website pumps under Complainant’s registered trade mark 凯士比 (a Chinese transliteration of KSB) when no such authorization of sale has been given by Complainant. Moreover, nor does it appear that the website at the disputed domain name accurately discloses the lack of authorized relationship with the trade mark holder; indeed, as discussed further below, it would appear that the website operator may be seeking to represent itself as an agent of Complainant, where no such agency relationship exists.

4. Complainant and its trade mark KSB enjoy a substantial reputation with regard to its pumps and valves sold and manufactured since the 70s. Consequently, in the absence of contrary evidence from Respondent, the KSB trade mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.

The Panel finds for Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trade mark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

The Panel finds that Complainant enjoys a long and widespread reputation in its KSB trade mark particularly in the pumps and valves market. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcend national borders. More importantly, Complainant has adduced evidence to demonstrate its substantial presence in Asia particularly, Hong Kong, SAR of China, China and Malaysia. Therefore, the Panel finds that it is highly unlikely that Respondent would not have had actual notice of Complainant’s trade mark rights at the time of the registration of the domain name. There are also other evidence such as the cease and desist letter from Complainant to third party user Beijing Osron; the communications between Complainant and representative from third party user Beijing Osron; the fact that third party user Beijing Osron has offered for sale on the website pumps bearing Complainant’s registered trade mark 凯士比 (a Chinese transliteration of KSB); which shows that Respondent must be aware of Complainant and its trade mark rights at the time of registration of the disputed domain name. Consequently, in the absence of contrary evidence from Respondent, the Panel finds that the KSB trade mark, being a highly distinctive trade mark of a longstanding reputation, is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. Thus, it would have been pertinent for Respondent to provide an explanation of its choice in the disputed domain name. However, Respondent has chosen not to respond to Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by Respondent in bad faith with the intent to create an impression of an association with Complainant and its products and services, and profit there from.

Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website offering products which are similar to Complainant, i.e. pumps and valves. In fact, evidence has been adduced by Complainant to show that Respondent and its authorized third party user, Beijing Osron, has represented on the website that it is acting as agent for sale and post-sale supporting services of KSP pumps and it offers supply of various types of pumps under Complainant’s registered trade mark 凯士比 (a Chinese transliteration of KSB), when such agency does not exist and no such authorization to sell has been given by Complainant. Given the long and widespread reputation of Complainant’s KSB mark, the compelling conclusion is that Respondent, by choosing to register and use a domain name which is confusingly similar to Complainant’s widely known and distinctive trade mark, intended to ride on the goodwill of Complainant’s trade mark in an attempt to exploit, for commercial gain, Internet traffic destined for Complainant. Potential partners and end users are led to believe that the website “www.ksbpump.com” is one of Complainant’s site or the site of official authorized partners of Complainant in China, while in fact it is neither of these. Consequently, Respondent and its authorized third party user, Beijing Osron, has through the use of a confusingly similar domain name created a likelihood of confusion with Complainant’s KSB trade mark and this constitutes a misrepresentation to the public that Respondent’s website is in one way or the other associated or connected with Complainant’s. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent and its authorized third party user, Beijing Osron, as far as the website on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel finds for Complainant on the third part of the test.

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, <ksbpump.com> be transferred to Complainant.

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Susanna H.S. Leong
Sole Panelist

Dated: December 7, 2007