W.W. Grainger, Inc. v. NV Locked
Claim Number: FA1208001459213
Complainant is W. W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is NV Locked (“Respondent”), U.S. Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <graingerparts.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 22, 2012; the National Arbitration Forum received payment on August 27, 2012.
On August 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <graingerparts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@graingerparts.com. Also on August 28, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 September 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the GRAINGER mark since 1927 in connection with the sale and distribution of its goods, which include air compressors, accessories, and related parts.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office (“USPTO”), for its GRAINGER trademark and service mark (includ-ing Reg. No. 1,559,199, registered October 3, 1989).
Respondent registered the <graingerparts.com> domain name, which is con-fusingly similar to Complainant’s GRAINGER mark, on June 22, 1998.
Respondent does not operate a business or other organization under the GRAINGER mark or name, and Respondent does not own any trademark or service mark rights in the GRAINGER name.
Respondent’s employment of the <graingerparts.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has not been commonly known by the contested domain name.
Respondent has neither any rights to nor any legitimate interests in the contested domain name.
Respondent’s registration and use of the disputed domain name is in bad faith.
Respondent generates income through its use of pay-per-click hyperlinks hosted at the website resolving from the domain name.
Respondent’s use of a domain name which is confusingly similar to Complain-ant’s GRAINGER mark causes confusion among Internet users as to the possi-bility of Complainant’s affiliation with Respondent and its domain name.
Respondent knew of Complainant’s rights in the GRAINGER mark when it regis-tered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the GRAINGER trademark and service mark by virtue of its trademark registration of the mark with a national trademark authority, the USPTO. See, for example, Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), where a panel concluded that a UDRP complainant’s registration of its mark with the USPTO was sufficient to show its rights in the mark for purposes of the Policy.
Turning to the central question arising under this head of the Policy, we find from our review of the record that the <graingerparts.com> domain name is confus-ingly similar to Complainant’s GRAINGER trademark and service mark. The domain name incorporates Complainant’s entire mark, with only the addition of the generic term “parts,” which relates to an aspect of Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the do-main name, do not save the domain name from a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Express Co. v. Must-Need.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent has not been commonly known by the <graingerparts.com> domain name, that Respondent does not operate a business or other organiza-tion under this mark or name, and that Respondent does not own any trademark or service mark rights in the GRAINGER name. Moreover, the WHOIS informa-tion for the <graingerparts.com> domain name identifies the registrant of the domain name only as “Domains By Proxy, LLC,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain name within the meaning of Policy ¶ (c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information im-plies that Respondent is ‘commonly known by’ the disputed domain name” was a factor in determining that Policy ¶ 4(c)(ii) did not apply).
We next observe that Complainant contends, without objection from Respondent, that, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name in that Re-spondent employs the domain name to resolve to a website which hosts hyper-links to the websites of businesses unrelated to Complainant’s business. We concur. The use of the domain name in the manner alleged in the Complaint is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, for example, Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), holding that a respondent’s use of a disputed domain name to divert Internet traffic to websites whose content was unrelated to a UDRP complainant’s mark was not a bona fide use.
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent attracts Internet traffic to its webpage by using a domain name which is confusingly similar to Complainant’s GRAINGER trademark and service mark. It does this in order to attract consumers seeking to do business with Complainant. Respondent profits when website visitors click on the hyperlinks featured on its resolving website. This demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a do-main name confusingly similar to the mark of another to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
In addition, we are persuaded from the evidence that Respondent was aware of Complainant’s rights in the GRAINGER mark when it registered the disputed domain name. This demonstrates that Respondent registered the domain name in bad faith within the contemplation of Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between a UDRP complainant's mark and the content advertised on a respondent's web-site was obvious, that respondent "must have known about the Complainant's mark when it registered the subject domain name").
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <graingerparts.com> domain name be forth-with TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 2, 2012
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