W.W. Grainger, Inc. v. Private Registration (auc)
Claim Number: FA1004001317171
Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Private Registration (auc) (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <graniger.com>, registered with Bargin Register, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2010.
After numerous requests, the Registrar, Bargin Register, Inc., has not confirmed to the National Arbitration that the <graniger.com> domain name is registered with Bargin Register, Inc. or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On April 21, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@graniger.com by e-mail. Also on April 21, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <graniger.com> domain name is confusingly similar to Complainant’s GRAINGER.COM mark.
2. Respondent does not have any rights or legitimate interests in the <graniger.com> domain name.
3. Respondent registered and used the <graniger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, W.W. Grainger, Inc., markets and sells facilities, maintenance, repair, and operating supplies under its GRAINGER.COM mark. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GRAINGER.COM mark (e.g., Reg. No. 2,194,993 issued October 13, 1998).
Respondent registered the <graniger.com> domain name on June 7, 2002. The disputed domain name resolves to a pay-per-click website that features hyperlinks which resolve to Complainant and other third parties. Some of the third parties compete with Complainant in the facilities, maintenance, repair, and operating supplies business.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Past panels have held that a trademark registration with a federal trademark agency is sufficient to establish rights in a mark and that a complainant is not required to register the trademark within the same country a respondent resides in for a complainant to establish rights in a mark. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant owns a trademark registration with the USPTO for its GRAINGER.COM mark (e.g., Reg. No. 2,194,993 issued October 13, 1998). The Panel finds that Complainant has established rights in its GRAINGER mark under Policy ¶ 4(a)(i).
Respondent’s <graniger.com> domain name is confusingly similar to Complainant’s GRAINGER.COM mark. The disputed domain name contains a common misspelling of Complainant’s mark that transposes the letters “i” and “n.” The transposition of letters does not sufficiently distinguish a disputed domain name from a complainant’s mark. See Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark). Thus, the Panel finds that Respondent’s <graniger.com> domain name is confusingly similar to Complainant’s GRAINGER.COM mark.
The Panel concludes Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have any
rights or legitimate interests in the <graniger.com > domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient
prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l
Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June
27, 2000) (finding it appropriate for the panel to draw adverse inferences from
the respondent’s failure to reply to the complaint).
Complainant alleges that Respondent is not commonly known by the <graniger.com> domain name and is not authorized or licensed to use Complainant’s GRAINGER.COM mark. Complainant states that Respondent does not operate a company or business under the <graniger.com> domain name. The WHOIS information lists the domain name registrant as “Private Registration (auc),” not similar to the disputed domain name. Respondent has failed to present any evidence that would support a finding that Respondent is commonly known by the disputed domain name. Based on the evidence in the record, the Panel holds that Respondent is not commonly known by the <graniger.com> domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <graniger.com> domain name resolves to a website that features third-party hyperlinks and a hyperlink to Complainant’s website. Some of the third-party hyperlinks compete with Complainant and offer competing facilities, maintenance, repair, and operating supplies. Complainant claims that Respondent profits from the resolving website through the receipt of click-through fees. The Panel finds that Respondent’s use of the <graniger.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent uses the <graniger.com> domain name to resolve to a website that contains third-party hyperlinks to Complainant’s competitors in the supplies business. This disrupts Complainant’s business because Internet users interested in purchasing supplies from Complainant may purchase the same supplies from one of Complainant’s competitors. Complainant asserts that Respondent’s use of the confusingly similar disputed domain name causes Complainant to lose business to its competitors. The Panel finds that Respondent’s use of the <graniger.com> domain name does disrupt Complainant’s supplies business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Respondent uses the <graniger.com> domain name to operate a pay-per-click website. The Panel presumes that Respondent receives click-through fees for each time an Internet user clicks on one of the featured hyperlinks. Respondent utilizes the confusingly similar disputed domain name in order to create confusion among Internet users as to Complainant’s association with or sponsorship of the disputed domain name, resolving website, and featured hyperlinks in order to increase the amount of traffic to the resolving website and, therefore, increase the amount of clicks on the hyperlinks. The Panel finds Respondent’s use of the <graniger.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel holds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <graniger.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 26, 2010
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