Lincoln Electric Company and Lincoln Global, Inc. v. Ong Huynh Van Hon / Vietnam Domain Registration Supplier 1
Claim Number: FA1210001468796
Complainant is Lincoln Electric Company and Lincoln Global, Inc. (“Complainant”), represented by Shannon McCue of Hahn Loeser & Parks LLP, Ohio, USA. Respondent is Ong Huynh Van Hon / Vietnam Domain Registration Supplier 1 (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia>, registered with OnlineNIC, Inc.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2012; the National Arbitration Forum received payment on October 24, 2012.
On October 30, 2012, OnlineNIC, Inc confirmed by e-mail to the National Arbitration Forum that the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names are registered with OnlineNIC, Inc and that Respondent is the current registrant of the names. OnlineNIC, Inc has verified that Respondent is bound by the OnlineNIC, Inc 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2012 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@lincoln-electric.asia, postmaster@lincoln-electronics.com, postmaster@lincoln-electronics.net, postmaster@lincoln-electronics.asia, postmaster@lincoln-power.com, postmaster@lincoln-power.net, postmaster@lincoln-power.asia, and postmaster@lincoln-ups.asia. Also on November 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 (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. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1.Complainant owns multiple trademark registrations for its LINCOLN family of marks with trademark agencies in the United States, Vietnam, and Taiwan. Complainant submits evidence of its trademark registrations for the LINCOLN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 240,429 registered March 27, 1928), as well as Vietnam’s National Office of Intellectual Property (“NOIP”) (e.g., Reg. No. 12,846, priority date October 1, 1994). See Annex A. Complainant also asserts that it owns trademarks for the LINCOLN ELECTRIC mark with the USPTO (e.g. Reg. No. 2,350,124 registered May 16, 2000), and with NOIP (e.g., Reg. No. 41,150 registered January 2, 2001). See Annex A. Complainant owns numerous domain names incorporating the LINCOLN mark, including <lincoln-electric.com> and <lincolnelectric.com>.
2.Complainant hosts websites at the domain names that relate to its business in the market of global manufacturing and distributing welding, cutting, and joining products, including welders, welding heads, transformers, controllers for electrical arc welders, structural welding parts, consumables, electrodes, and generators. Complainant’s many years of advertising and use of the LINCOLN marks has developed a strong brand name for Complainant’s company.
3.Respondent registered the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names between May 2012 and June 2012, at which times Respondent had at least constructive knowledge of Complainant’s rights in the LINCOLN and LINCOLN ELECTRIC marks.
4. Each of the disputed domain names is confusingly similar to Complainant’s marks, and several of the domain names are typosquatted versions of Complainant’s mark.
5.Complainant has no rights or legitimate interests in the disputed domain names and fails to make a bona fide offering of goods or services at the domain name or a legitimate noncommercial or fair use thereof. Respondent is not licensed to use the marks in a domain name and is not commonly known by the disputed domain names.
6. The domain name has been registered and is being used in bad faith.
7.Respondent’s registration of the domain names was made to prevent Complainant from manifesting its marks in the corresponding domain names, and demonstrates a pattern of bad faith registration and use.
8.Respondent intends to profit from its use of the disputed domain names by taking advantage of the goodwill associated with Complainant’s mark, which is evidence of bad faith under Policy ¶ 4(b)(i).
9.Respondent has registered numerous other domain names using names of well-known trademark, which is further evidence of bad faith registration and use.
10.Respondent fails to use the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names in any way, as the domain names resolve to blank websites.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, the National Arbitration Forum was copied on documentation submitted from Respondent to Complainant and described below. In this documentation, Respondent purports to consent to the transfer of the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names.
FINDINGS
The Panel will not make any findings of fact in view of the circumstances explained below.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
There are two Complainants in this matter: Lincoln Electric Company and Lincoln Global, Inc. Complainant claims that Lincoln Global, Inc. is the parent company of Lincoln Electric Company, both of which own trademark registrations together for the various LINCOLN family of marks.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and accordingly it may treat them all as a single entity in this proceeding. Consequently, the Complainants will be collectively referred to as “Complainant” in this decision.
The National Arbitration Forum has been furnished with and has provided to the Panel copies of emails passing between the representative of Complainant and Respondent from November 6, 2012 to November 26, 2012. The substance of the emails is that Respondent purports to consent to the transfer of the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names to Complainant, Complainant accepts that consent and the parties record the completion of the documentation to effect the transfers.
Respondent is therefore consenting to transfer the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names to Complainant. However, after the initiation of this proceeding, OnlineNIC, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel may and in the present proceeding is of the view that it should decide to forego the traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Having established and determined that the requests of the parties in this case are identical, in that Respondent does not contest Complainant’s remedy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lincoln-electric.asia>, <lincoln-electronics.com>, <lincoln-electronics.net>, <lincoln-electronics.asia>, <lincoln-power.com>, <lincoln-power.net>, <lincoln-power.asia>, and <lincoln-ups.asia> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 12, 2012
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