W.W. Grainger, Inc v. Fei Zhu
Claim Number: FA1004001320492
Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lumapro.com>, registered with Rebel.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2010.
On April 22, 2010, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <lumapro.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 18, 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@lumapro.com by email. Also on April 28, 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 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <lumapro.com> domain name is identical to Complainant’s LUMAPRO mark.
2. Respondent does not have any rights or legitimate interests in the <lumapro.com> domain name.
3. Respondent registered and used the <lumapro.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, W.W. Grainger, Inc., uses its LUMAPRO mark in relation to the production, promotion, sale and distribution of light fixtures, lights stands, bulbs and related accessories. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LUMAPRO mark (e.g., Reg. No. 2,406,756 filed April 7, 1998; issued November 21, 2000).
Respondent, Fei Zhu, registered the <lumapro.com> domain name on August 24, 1999. Respondent’s disputed domain name resolves to a website that displays various third-party links to competing manufacturers and sellers of lights and light fixtures to Complainant.
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.
The Panel finds that Complainant has established rights in
its LUMAPRO mark pursuant to Policy ¶ 4(a)(i) through
its trademark registration with the USPTO (e.g.,
Reg. No. 2,406,756 filed April 7, 1998; issued November 21, 2000). The Panel further finds that the valid date
to establish rights in a mark under Policy ¶ 4(a)(i)
is the filing date of the mark with a governmental trademark authority. In this case Complainant’s trademark rights
predate Respondent’s registration of the disputed domain name because
Complainant filed its trademark registration with the USPTO on April 7, 1998
and Respondent didn’t register the <lumapro.com> domain name until August 24, 1999. See Hershey
The Panel finds that Policy ¶ 4(a)(i) has been satisifed.
Complainant contends that Respondent does not possess rights or legitimate interests in the <lumapro.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Upon Complainant’s production of a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
The WHOIS information for the <lumapro.com> domain name identifies “Fei Zhu” as the registrant, and Respondent offers no evidence to show that it is commonly known by the disputed domain name. Complainant further submits that it has not granted Respondent permission to use its LUMAPRO mark. The Panel finds that, absent affirmative evidence indicating otherwise, Respondent is not commonly known by the disputed domain name under 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also argues that Respondent’s actions in reference to the <lumapro.com> domain name do not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Complainant submits screen shots of Respondent’s website to show that Respondent is merely displaying third-party links to Complainant’s competitors in the manufacture and sale of lights and light fixtures. The Panel finds that such use is evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name because such use is not a bona fide offering of goods or services under 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed
domain name to divert Internet users seeking Complainant’s products to
Respondent’s website that displays third-party links to competing businesses to
Complainant is evidence of bad faith registration and use. Complainant contends that such use results in
a loss of business and consumer traffic to Complainant’s business. The Panel agrees and finds that Respondent’s
use of the disputed domain name to redirect Internet users to the websites and
businesses of Complainant’s competitors is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors); see also 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).”).
Complainant further argues that Respondent is using the disputed domain name to intentionally attract Internet users to Respondent’s website, where it presumably collects click-through fees from the third-party links displayed on its website. Complainant contends that Respondent’s registration and use of the identical <lumapro.com> domain name in such a manner is evidence of bad faith registration and use. The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv) where Respondent is using a domain name that is identical to Complainant’s mark to divert Internet users to Complainant’s competitors, presumably for financial gain. See 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); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds 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 <lumapro.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 3, 2010
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