national arbitration forum

 

DECISION

 

W.W. Grainger, Inc. v. Kim Bum LLC / Kim Bum

Claim Number: FA1211001470241

 

PARTIES

Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Kim Bum LLC / Kim Bum (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <graingerlearingcenter.com>, registered with RegisterMatrix.com Corp.

 

PANEL

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2012; the National Arbitration Forum received payment on November 14, 2012.

 

On November 13, 2012, RegisterMatrix.com Corp. confirmed by e-mail to the National Arbitration Forum that the <graingerlearingcenter.com> domain name is registered with RegisterMatrix.com Corp. and that Respondent is the current registrant of the names.  RegisterMatrix.com Corp. has verified that Respondent is bound by the RegisterMatrix.com Corp. 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 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@graingerlearingcenter.com.  Also on November 15, 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 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is the owner of the GRAINGER trademark, which it has used since 1927 in connection with its business of distributing and selling maintenance, repair, and operating supplies. Complainant sells air compressors, accessories, and related parts, and uses its GRANGER mark on the packaging for it goods, as well as to advertise at trade shows and on websites. Complainant makes significant sales at its <grainger.com> website, which allows customers to order Complainant’s products online. The GRAINGER mark has become well-known to consumers through Complainant’s long use of the mark. Complainant owns trademark registrations for its GRAINGER marks through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,559,199 registered October 13, 1989).

 

Respondent registered the <graingerlearingcenter.com> domain name, which resolves to a website that uses pay-per-click hyperlinks to divert consumers to other websites not associated with Complainant, some of which compete with Complainant’s business, as well as to Complainant’s own website. The <graingerlearingcenter.com> domain name is confusingly similar to Complainant’s GRAINGER mark. Respondent is not commonly known by the disputed domain name, nor does it use the domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent registered and uses the <graingerlearingcenter.com> domain name in bad faith due to Respondent’s use of the domain name to make a commercial profit by diverting consumers to Complainant’s competitors and by registering the domain name with actual and constructive notice of Complainant’s rights in the GRAINGER mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the GRAINGER mark.  Respondent’s domain name is confusingly similar to Complainant’s mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the <graingerlearingcenter.com> domain name, and that Respondent registered and uses the domain name in bad faith.

 

DISCUSSION

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 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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant owns rights in the GRAINGER mark due to its many trademark registrations of the mark with the USPTO (e.g., Reg. No. 1,559,199 registered October 13, 1989). Complainant’s USPTO registrations demonstrate rights in the mark sufficient to satisfy Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s operation in order to demonstrate rights in that country. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant argues that the <graingerlearingcenter.com> domain name is confusingly similar to Complainant’s GRAINGER mark as a result of the domain name’s incorporation of Complainant’s GRAINGER mark in its entirety, with the addition of the generic terms “learing” and “center.” The <graingerlearingcenter.com> domain name includes the generic top-level domain (“gTLD”) “.com.” By adding generic terms and a gTLD, the <graingerlearingcenter.com> domain name is nevertheless confusingly similar to Complainant’s GRAINGER mark for the purposes of Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant argues that Respondent is not commonly known by the <graingerlearingcenter.com> domain name as Respondent does not operate a business under the GRAINGER mark or own any trademark rights in the mark. The WHOIS information associated with the domain name identifies “Kim Bum LLC” as the registrant which does not demonstrate that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s registered and distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).

 

Based upon the record, the Panel agrees that Respondent fails to use the <graingerlearingcenter.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use due to Respondent’s use of the domain name to feature a variety of hyperlinks to other businesses at the resolving website, some of which belong to entities in competition with Complainant’s business. Respondent’s use of the domain name presents a risk that Complainant’s GRAINGER mark is being used in association with products and services unrelated to Complainant and in relation to a directory site “over which Complainant has no quality control.” Thus, Respondent has failed to use the <graingerlearingcenter.com> domain name to make 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant argues that Respondent obtains commercial benefit from its use of the website at the <graingerlearingcenter.com> domain name as Respondent provides a list of hyperlinks, some of which resolve to Complainant’s own website, and others which resolve to the websites of Complainant’s competition. Using a confusingly similar domain name to link its website with competing businesses’ websites, as well as Complainant’s own website, in order to make a financial gain, amounts to Respondent’s registration and use of the <graingerlearingcenter.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

 

Complainant asserts that Respondent’s actual and constructive knowledge of Complainant’s rights in the GRAINGER mark serve as evidence of Respondent’s bad faith registration. Complainant contends that the content found at the disputed domain name reveals Respondent’s actual knowledge of the GRAINGER mark. Because some of the hyperlinks found at the resolving website resolve to Complainant’s own website, Respondent must have had actual notice of Complainant’s GRAINGER mark at the time it registered the <graingerlearingcenter.com> domain name, demonstrating Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <graingerlearingcenter.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  December 26, 2012

 

 

 

 

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