W.W. Grainger, Inc. v. Online Management
Claim Number: FA1311001528223
Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gfrainger.com> and <newgrainger.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 5, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 5, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <gfrainger.com> and <newgrainger.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 November 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 3, 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@gfrainger.com, postmaster@newgrainger.com. Also on November 13, 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 December 5, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The Complainant owns the GRAINGER Trademarks and makes extensive use of them such that they have become famous.
Complainant Owns The Marks Complainant is the owner of the distinctive and well known GRAINGER trademark and its corresponding logo (the “Marks”). At least as early as 1927, Complainant commenced use of the Marks in connection with the production, promotion, sale and distribution of facilities, maintenance, repair and operating supplies, including pneumatic products and accessories. Since that time, Complainant has continually used the Marks in commerce.
The Marks Are Extensively Used, Promoted and Protected. Complainant is the leading broad-line supplier of facilities, maintenance, repair and operating supplies in North America, including the sale of air compressors, pneumatics, accessories and related parts. In 1967 Complainant became a publicly traded company whose stock is currently listed on the Chicago and New York Stock Exchanges under the ticker symbol GWW.
Complainant extensively promotes its GRAINGER Marks and uses them on packaging for Complainant’s goods, on Complainant’s catalogs, on websites featuring Complainant’s goods, and in advertisement and other promotional efforts such as Complainant’s appearance at trade shows. Complainant has also been the recipient of numerous awards including a 2006 Supplier Performance Award from the U.S. Postal Service; being ranked at No. 3 in Fortune Magazine’s America's Most Admired Companies, Diversified Wholesalers in 2007 and being ranked No. 2 in 2008; the City of Baltimore Mayor’s Business Award in 2008; and being named one of the Best Places to Work in Information Technology by Computerworld Magazine in 2009.
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its <grainger.com> website. Through this site, Complainant provides information to prospective customers and allows customers to order products for shipping or will-call at one of Complainant’s many retail locations. As a result of Complainant’s long and extensive efforts to promote the Marks, the Marks serve to identify and indicate the source of Complainant’s goods and services to the consuming public, and to distinguish its goods and services from those of others. The Marks have become well-known to, and widely recognized by consumers. Furthermore, Complainant uses the domain Disputed Domains to enable its distributors to educate themselves on the various products and services sold by Complainant.
Complainant’s GRAINGER marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns United States Federal Trademark Registrations for the Marks as follows. It is important to note that some of these registrations were filed under Section 2(f) with no disclaimers indicating that evidence of their distinctiveness was provided to the United States Patent and Trademark Office and was accepted by the Examiner in each case.
Mark--Goods and Services --Reg. No.--Reg. Date
GRAINGER IC 035. US 100 101 102. G & S: catalogue services in the general merchandise field. FIRST USE: 19280000. FIRST USE IN COMMERCE: 19280000
IC 042. US 100 101. G & S: CATALOGUES FOR MERCHANDISE SALES TO BUSINESS AND INDUSTRY. FIRST USE: 19280000. FIRST USE IN COMMERCE: 19280000 1559199
2(f) October 13, 1989
GRAINGER IC 042. US 100 101. G & S: distributorship services of commercial and industrial equipment and supplies; telephone and mail order services in the field of commercial and industrial equipment and supplies; wholesale outlets featuring commercial and industrial equipment and supplies. FIRST USE: 19280000. FIRST USE IN COMMERCE: 19280000 1747557 2(f) January 19, 1993
GRAINGER IC 009. US 021 023 026 036 038. G & S: computer software, compact disks and manuals sold as a unit therewith containing a catalog and related product, availability, and supply information in the field of industrial, commercial and janitorial supplies and equipment. FIRST USE: 19940100. FIRST USE IN COMMERCE: 19940100 2039641 2(f) February 25, 1997
GRAINGER IC 035. US 100 101 102. G & S: procurement of industrial, commercial and janitorial supplies and equipment; automated inventory maintenance for customers in the field of industrial, commercial and janitorial supplies and equipment; and providing access by electronic means to a catalog in the field of industrial, commercial, and janitorial supplies and equipment and providing information relevant to its use. FIRST USE: 19950300. FIRST USE IN COMMERCE: 19950300
IC 037. US 100 103 106. G & S: providing access by electronic means to information in the field of industrial, commercial, and janitorial supplies and equipment and providing information relevant to its use. FIRST USE: 19960500. FIRST USE IN COMMERCE: 19960500 2128519 January 13, 1998
GRAINGER.COM IC 035. US 100 101 102. G & S: on-line catalog services in the field of institutional, commercial and industrial equipment and supplies and janitorial equipment and supplies by means of a computer modem or other electronic link-up. FIRST USE: 19960100. FIRST USE IN COMMERCE: 19960100 2194993 October 13, 1998
GRAINGER (Logo) IC 016. US 002 005 022 023 029 037 038 050. G & S: catalogs in the field of industrial, institutional, commercial, and janitorial equipment and supplies. FIRST USE: 20040700. FIRST USE IN COMMERCE: 20040700
IC 035. US 100 101 102. G & S: telephone, on-line and mail order catalog services in the field of industrial, institutional, commercial and janitorial equipment and supplies; wholesale distributorships featuring industrial, institutional, commercial and janitorial equipment and supplies; wholesale outlet stores featuring industrial, institutional, commercial and janitorial equipment and supplies; computerized on-line ordering services by means of a computer modem or other electronic link-up, in the field of industrial, institutional, commercial and janitorial equipment and supplies; procurement for others of industrial, institutional, commercial and janitorial equipment and supplies; automated inventory control for customers in the field of industrial, institutional, commercial and janitorial equipment and supplies; and providing relevant information and consulting services in connection therewith. FIRST USE: 20040300. FIRST USE IN COMMERCE: 20040300 3053642 January 31, 2006
Respondent’s Past Infringing Activity. At the outset, it must be noted that Respondent is a well-known cybersquatter and is engaged in a pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. A number of prior UDRP cases have been successfully brought against Respondent, including the following:
Case No.--Domain(s) --Case Name—Status—Decision--Date
1518428(NAF)--planetfitnnes.com--PFIP, LLC V. Online Management—Transferred--03-Oct-2013
1517908(NAF)--pncbenifits.com--The PNC Financial Services Group, Inc. V. Online Management—Transferred--07-Oct-2013
D2013-1403(WIPO) --netarporter.com--The Net-A-Porter Group Limited
V. Domains By Proxy, LLC / Online Management LTD.—Transfer--02-Oct-2013
1509872(NAF)benefifocus.com--Benefitfocus.com, Inc.
V. Online Management—Transferred--04-Sep-2013
The prior decision against Respondent are highly relevant to the present case. See, Time Warner Inc. v. mga enterprises limited, NAF Case No. 1426479 (2012) (Based on prior adverse UDRP decisions against respondent, “[t]he Panel finds that Respondent has engaged in a pattern of infringing domain name registrations indicating bad faith registration and use of the disputed domain names under Policy ¶4(b)(ii).”).
Respondent’s registration of the Disputed Domains violates the Policy.
The Disputed Domains are identical or confusingly similar to the Marks under Policy ¶4(a)(i). Each of Respondent’s domain Disputed Domains are confusingly similar, on their face, to Complainant’s registered and distinctive GRAINGER trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the Disputed Domains.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to GRAINGER trademark). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id. See also, Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its websites by using confusingly similar copies of Complainant’s Marks. By merely adding the letter “f”, as in the <Gfrainger.com> domain, or the word “new”, as in the <NewGrainger.com> domain, Respondent makes visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. The Disputed Domains is even more likely to cause confusion with Complainant’s own <Grainger.com> domain and its website which is specifically formatted for mobile devices which is found at the URL http://m.Grainger.com. See, Exhibits D 9-10.
As reasoned in Athanasios, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that one of the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the Disputed Domains website. As in Athanasios, Respondent here uses the Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the Disputed Domains web pages and numerous links to other goods and services are also listed on those pages, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant. This is apparent because the Marks are clearly used on the web page.
(b) Respondent has no rights or legitimate interest in the domain name Disputed Domains Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the Disputed Domains. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of classic pay-per-click websites, Respondent’s Disputed Domains divert Complainant’s customers and potential customers to Respondent’s pay-per-click websites and then to other websites which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the Disputed Domains and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by the name GRAINGER nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the GRAINGER name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the Disputed Domains without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Focus Do It All Group v. Athanasios Sermbizis, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s GRAINGER goods and services, who used the domain name Disputed Domains, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the GRAINGER Marks by Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s GRAINGER trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to a directory site over which Complainant has no quality control.
(c) Respondent Registered The Disputed Domains In Bad Faith Under Policy ¶4(a)(iii).
The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the GRAINGER Marks without consent from Complainant. Respondent was put on both actual and constructive notice of Complainant’s rights in the Marks through Complainant’s extensive use of its Marks and by the above-referenced Federal Trademark Registrations, all of which predate the creation dates of Disputed Domains. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks. Moreover, the content on Respondent’s websites at Disputed Domains reveals that Respondent has actual knowledge of the Marks and Complainant’s goods associated with the mark and is purposefully trading on the Marks.
Even after Complainant sent demand letters and follow-up letters to Respondent between September 5, 2013 and October 7, 2013, Respondent remained failed to cooperate with Complainant an continued to operate its infringing websites.
Respondent is obtaining commercial gain from its use of the websites to which the Disputed Domains resolve. These are directory or “pay-per-click” websites providing listings of hyperlinks, some of which lead to Complainant’s website and some to the websites of Complainant’s competitors. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the websites of the Disputed Domains. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to these directory sites. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click sites under the Disputed Domains alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain names and websites results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the Disputed Domains. Respondent’s use of these domain names is commercial because the various companies linked to these directory sites benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the Disputed Domains, Respondent is entirely and solely responsible for the content of their websites. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”
As noted above, further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged involving cybersquatted domain names. Target Brands, Inc. v. Guowei Hai Gui, NAF Claim No. FA1102001371811 (2011) (“Respondent has been a party to [and lost] previous UDRP decisions … [and] [t]his is evidence that Respondent is a serial cyber-squatter, which in turn demonstrates that Respondent registered and uses the <tatget.com> domain name in bad faith.”).
Finally, as more fully set forth above, Respondent uses the Marks intentionally in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s GRAINGER Marks and such intentional action, alone, is strong evidence of its bad faith. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the Disputed Domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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.”).
Complainant uses the GRAINGER mark in connection with the production, promotion, sale, and distribution of business maintenance, repair, and operating supplies. Complainant has used its mark in commerce since as early as 1927. Complainant registered the GRAINGER mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 1,559,199 registered October 3, 1989). A complainant can establish its rights in a mark under Policy ¶4(a)(i) by registering the mark with the USPTO. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). A complainant does not need to register its mark in the respondent’s country of residence in order to establish its rights in the mark under the Policy. See, e.g., 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 Policy ¶4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Complainant’s registration of the GRAINGER mark with the USPTO adequately establishes Complainant’s rights in the mark under Policy ¶4(a)(i), even though Respondent resides in the Cayman Islands.
Complainant claims the <gfrainger.com> and <newgrainger.com> domain names are confusingly similar to Complainant’s GRAINGER mark. Complainant points out the <gfrainger.com> domain name constitutes a simple misspelling of the GRAINGER mark, while the <newgrainger.com> domain name fully appropriates the mark and adds the generic term “new.” Each disputed domain name adds the generic top-level domain (“gTLD”) “.com.” A disputed domain name’s addition of a gTLD (or a ccTLD) is not relevant for the purposes of a confusing similarity analysis under Policy ¶4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”). A domain name that merely affixes an additional character to a complainant’s mark is confusingly similar to the mark under the Policy. See, e.g., Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). The <gfrainger.com> disputed domain name fully incorporates Complainant’s mark and merely inserts a single extra character: the letter “f.” The Panel finds the <gfrainger.com> domain name is confusingly similar to Complainant’s GRAINGER mark under Policy ¶4(a)(i).
A domain name is normally confusingly similar to a complainant’s mark where the domain name full incorporates the mark but adds a generic word. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Adding the word “new” in the <newgrainger.com> domain name is a generic word. The Panel finds the <newgrainger.com> domain name is confusingly similar to Complainant’s GRAINGER mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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 claims Respondent is not commonly known as <gfrainger.com> or <newgrainger.com> pursuant to Policy ¶4(c)(ii). A respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). The WHOIS information now identifies the registrant of the disputed domain names as “Online Management.” The original WHOIS information was a privacy service. The WHOIS information tends to show Respondent is commonly known as “Online Management” and not as <gfrainger.com> or <newgrainger.com>. There is no other evidence in the record to suggest Respondent is commonly known as <gfrainger.com> or <newgrainger.com>. The Panel finds Respondent is not known by the disputed domain names pursuant to Policy ¶4(c)(ii).
Complainant claims Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or for a legitimate noncommercial or fair use under Policy ¶4(c)(iii) because the domain names resolve to pay-per-click websites hosting generic links, which in turn resolve to additional pay-per-click websites. According to screenshots provided by Complainant, the website resolving from the <gfrainger.com> domain name hosts links entitled “Roofing Calculator,” “ESURANCE AUTO INSURANCE,” and “VA HOME LOANS- $0 DOWN,” among others. Screenshots provided by Complainant also suggest the website resolving from the <newgrainger.com> domain name hosts links entitled “FREE NEW YORK ATTRACTIONS,” “ONLINE COLLEGE’S,” and “GALAPAGOS ISLANDS HOTEL,” among others. Each disputed domain name is being used to promote links to third-party websites that are unrelated to Complainant’s business in the maintenance and repair industry. Using a disputed domain name to promote links to third parties that are unrelated to the complainant is not a use protected under Policy ¶¶4(c)(i) or 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Respondent’s use of the <gfrainger.com> and <newgrainger.com> domain names to promote links to websites in the insurance, loans, and tourism industries is not protected as 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).
Finally, Respondent used a privacy survive to register the disputed domain names. This means the owner of record has no control over the disputed domain name. The beneficial owner does not publicly associate itself with the disputed domain name so it cannot acquire any rights to the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a pattern of bad faith domain name registrations, which evidences Respondent’s bad faith registration and use of the <gfrainger.com> and <newgrainger.com> domain names pursuant to Policy ¶4(b)(ii). Specifically, Complainant cites the following UDRP decisions that previously ordered the transfer of a domain name from Respondent to a third party: PFIP, LLC v. Online Management, FA 1518428 (Nat. Arb. Forum Oct. 3, 2013); The PNC Financial Services Group, Inc. v. Online Management, FA 1517908 (Nat. Arb. Forum Oct. 7, 2013); and Benefitfocus.com, Inc. v. Online Management, FA 1,509,872 (Nat. Arb. Forum Sept. 4, 2013). This is unpersuasive to the Panel. Each case must be judged on its own merits. Complainant has not been prevented from reflecting its mark in domain name under Policy ¶4(b)(ii). Therefore, this Panel declines to find bad faith registration and use because of this claim.
Complainant claims the disputed domain names attract Internet users to Respondent’s pay-per-click websites by creating a likelihood of confusion with Complainant’s GRAINGER mark. Respondent has engaged in demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶4(b)(iv). In T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), a previous panel held the registration and use of a domain name constituted bad faith under Policy ¶4(b)(iv) where the domain name was likely to be confused with the complainant’s mark and was being used to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources. The <gfrainger.com> domain name is likely to be confused with Complainant’s GRAINGER mark, because the domain name constitutes a common typographical error of Complainant’s mark. The <newgrainger.com> domain name is also likely to cause confusion because the domain name appropriates the entire GRAINGER mark and merely adds the generic term “new.” Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶4(b)(iv).
Finally, Complainant claims Respondent registered the disputed domain names with actual notice of Complainant’s rights in the GRAINGER mark, which demonstrates Respondent’s bad faith registration and use of the disputed domain names pursuant to Policy ¶4(a)(iii). This Panel is unconvinced (knowing how parking pages work) that the contents of the parking pages can be used to prove Respondent’s knowledge of Complainant’s mark. Furthermore, there is no showing Respondent competes with Complainant.
However, Respondent registered the disputed domain names using a privacy service. This Panel has repeatedly held that such a registration raises the rebuttable presumption of bad faith registration and use in a commercial context. Respondent has done nothing to rebut that presumption. That alone justifies a finding of bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <gfrainger.com> and <newgrainger.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 18, 2013
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