national arbitration forum

 

DECISION

 

W.W. Grainger, Inc. v. Nathan Millikan

Claim Number: FA1307001512400

PARTIES

Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, United States.  Respondent is Nathan Millikan (“Respondent”), Georgia, United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <agrainger.com> registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2013; the National Arbitration Forum received payment on August 1, 2013.

 

On July 31, 2013, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <agrainger.com>  domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name.  MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2013 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@agrainger.com.  Also on August 2, 2013, 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 September 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco, 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

Policy ¶ 4(a)(i)

Complainant, W.W. Grainger, Inc. has used its GRAINGER mark since as early as 1927 in connection with the production, promotion, sale, and distribution of maintenance, repair, and operating supplies. Complainant has interests in the GRAINGER mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,559,199, registered October 13, 1989).

 

Respondent’s <agrainger.com> domain name is confusingly similar to Complainant’s GRAINGER mark, because the domain names differ from the mark by the addition of an “a”.

 

Respondent is not commonly known as <agrainger.com> because Respondent does not operate any legitimate business under this name, and Complainant has not authorized Respondent to use its GRAINGER mark. Moreover, Respondent has not submitted any evidence in this proceeding to demonstrate that it is commonly known as <agrainger.com>.

Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods and services or a legitimate noncommercial or fair use, because Respondent is using the domain name to conduct a fraudulent scheme to defraud suppliers of certain IT products.

 

Respondent has demonstrated bad faith under Policy ¶ 4(b)(iv), because its registration and use of the <agrainger.com> domain name was an intentional attempt to mislead Internet users into believing that Complainant endorses the website resolving from the disputed domain name, and is part of a scheme to mislead suppliers of certain IT products into believing that Respondent was a legitimate subsidiary of Complainant. Respondent intended to attain a commercial benefit from its scheme in the form of products sent to Respondent by defrauded IT suppliers, which Respondent did not intend to pay for. Respondent’s use of the disputed domain name to pass itself off as Complainant constitutes bad faith under Policy ¶ 4(a)(iii).

 

Respondent’s actual notice of Complainant’s GRAINGER mark can be inferred under the circumstances, and tends to show that Respondent acted in bad faith under Policy ¶ 4(a)(iii).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns USPTO registered trademarks for GRAINGER.

 

Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark mark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired trademark rights in the GRANGER mark.

 

Respondent uses the at-issue domain name to redirect to website that originates from Complainant as a means to falsely associate itself with Complainant’s legitimate online presence. Respondent’s impersonation of Complainant is part of a scheme to mislead suppliers of certain IT products into believing that Respondent represents a legitimate subsidiary of Complainant. Respondent further uses the domain name to provide email addresses with a domain name that appears to be associated with Complainant. Respondent also uses such email address(es) to order products on Complainant’s account. The products are shipped to Respondent address and are never paid for thereby defrauding the suppliers.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant’s registration of GRAINGER with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).

 

The at-issue domain name incorporates Complainant’s GRAINGER mark, prefaces the mark with an “a,” and adds the top level domain name “.com”.  These slight modifications to Complainant’s trademark are insufficient to differentiate the domain name from the mark. Therefore the Panel finds that the at-issue domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) ( finding that the “mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark);  see also  Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).. 

 

Rights or Legitimate Interests

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at‑issue domain names.

 

Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.

 

The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Nathan Millikan a/k/a Jude Primeaux” and Respondent is purported to operate under the name of “Acklands-Grainger” as part of a fraudulent scheme. Respondent’s fraudulent use of the name “Acklands-Grainger” is insufficient to establish that Respondent is legitimately known by the domain name and the record before the Panel contains no evidence that tends to prove that Respondent is otherwise commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii). See 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 uses the at-issue domain name to send e-mails in which Respondent fraudulently purports to be a subsidiary company of Complainant called “Acklands-Grainger.” Respondent allegedly sends these e-mails to suppliers of certain IT products and offers to purchase IT products as “Acklands-Grainger,” with no intention of paying for the IT products ordered. The at-issue domain name addresses a website that redirects to one of Complainant’s own websites in order to further mislead suppliers into believing that Respondent is legitimately associated with Complainant. Under the circumstances Respondent has no rights or legitimate interests in either of the <agrainger.com>  domain name pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (holding that a respondent that attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark, is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain names were registered and are being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may also conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).

 

As mentioned above, Respondent’s registration and use of the <agrainger.com> domain name is part and parcel to Respondent’s scheme to mislead Internet users into believing that Respondent is associated with Complainant when it is not.  Respondent intends to achieve a commercial benefit from its scheme to defraud third party suppliers whereby Respondent, posing as a representative of a subsidiary of Complainant, is extended credit for merchandise shipped to Respondent’s address. Respondent never pays for the shipments.  Using the confusingly similar domain names in this manner demonstrates bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Additionally, there is nothing in the record which supports a conclusion that Respondent is doing anything other than passing itself off as Complainant. Therefore, the relevant circumstances also demonstrate Respondent’s bad faith under Policy ¶4(a)(iii). See Qatalyst Partners LP v. Devimore, FA 1393436 (Nat. Arb. Forum July 13, 2011)(finding that a respondent’s use of the disputed domain name as an e-mail address to pass itself off as the complainant in a fraudulent scheme was evidence of bad faith under the Policy); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding registration and use of the at-issue domain name was in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business to perpetrate a fraud.”

 

Finally, Respondent had actual knowledge of Complainant’s GRAINGER mark at the time it registered the <agrainger.com> domain name. Respondent’s prior knowledge of Complainant’s mark can be inferred from the worldwide notoriety of the GRAINGER mark, and the fact that Respondent makes flagrant use of Complainant’s mark in its fraudulent attempt to appear to be an associate of Complainant. Registering a domain name with knowledge that it is confusingly similar to the mark of another suggests bad faith under Policy ¶4(a)(iii). See, e.g., Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).

 

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 <agrainger.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  September 4, 2013

 

 

 

 

 

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