W.W. Grainger, Inc. v. George Washere
Claim Number: FA1311001528594
Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is George Washere (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <graingerwebex.com>, registered with eNom, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2013; the National Arbitration Forum received payment on November 11, 2013.
On November 7, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <graingerwebex.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@graingerwebex.com. Also on November 14, 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 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a well-known supplier of facilities, maintenance, repair and operating supplies in North America. Complainant has used the trademark GRAINGER in connection with this business for many years. Complainant holds numerous registrations for its GRAINGER mark in the United States and many other countries.
Respondent registered the disputed domain name <graingerwebex.com> on October 6, 2013. Complainant contends that the disputed domain name is confusingly similar to its mark. Complainant notes that it uses Cisco’s WebEx online meeting services using the domain name <grainger.webex.com>, which is nearly identical to the disputed domain name, and accuses Respondent of having registered the disputed domain name with the intent to cause confusion with Complainant’s WebEx domain name and falsely suggest an affiliation with or endorsement by Complainant.
The disputed domain name currently resolves to a web page containing what appear to be paid advertising links. Complainant asserts that it has not consented to the use of its mark by Respondent; and that Respondent is not commonly known by the domain name or its components, owns no rights in the GRAINGER name, and is not making a legitimate noncommercial or fair use of the domain name. Complainant further alleges that Respondent’s activities have tarnished and diluted Complainant’s mark. In addition, Complainant asserts that Respondent is “a well-known cybersquatter,” and notes that trademark owners have prevailed against Respondent in several previous proceedings under the Policy. On these and other grounds, Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been 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.”).
The disputed domain name is a combination of two registered trademarks, one of which is Complainant’s GRAINGER mark. As numerous decisions under the Policy have held, the addition of an unrelated trademark does not alleviate the confusion caused by the use of a well-known trademark in a domain name. See, e.g., Aventis Inc. v. Healthtrust Pharm, No. D2008-1417 (WIPO Nov. 14, 2008). The Panel finds that the disputed domain name is confusingly similar to Complainant’s GRAINGER mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark and that of a third party, and it resolves to a website seemingly calculated to create and exploit confusion among Internet users and infringe upon Complainant’s marks. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Bad faith may also be shown by evidence that Respondent “registered the domain name in order to prevent the
owner of the trademark or service mark from reflecting the mark in
a corresponding domain name, provided that [Respondent has] engaged in
a pattern of such conduct.” Paragraph 4(b)(ii).
Respondent’s use of the domain name for a website containing pay-per-click links, including links to Complainant’s competitors, is indicative of bad faith use under paragraph 4(b)(iv). See, e.g., Sentry Insurance v. Washere, FA 1513326 (Nat. Arb. Forum Sept. 14, 2013). Furthermore, trademark owners have prevailed against Respondent in several previous proceedings under the Policy, including Sentry Insurance and at least three other cases, demonstrating that Respondent has engaged in a pattern of bad faith domain name registrations. The Panel therefore finds that Complainant has sustained its burden of proving that the disputed domain name was registered and has been used in bad faith.
Complainant seeks an order transferring the disputed domain name to Complainant. The Panel notes that the domain name contains well-known trademarks of two separate entities, only one of which is a party to this proceeding.
Numerous cases have been decided under the Policy involving domain names comprised of two unrelated trademarks. Some Panels have ordered such domain names to be transferred to the party who brought the proceeding, e.g.,
America Online, Inc. v. Nasi, FA 102525 (Nat. Arb. Forum Feb. 1, 2002); Kinko's Ventures, Inc. v MIC, FA 95961 (Nat. Arb. Forum Dec. 26, 2000), while others have ordered cancellation of the domain name, e.g., Aventis Inc. v. Healthtrust Pharm, No. D2008-1417 (WIPO Nov. 14, 2008); Yahoo! Inc. v. Lam, D2004-0896 (WIPO Dec. 30, 2004) (ordering cancellation even after the Complainant provided a letter of support from the non-party trademark owner at the Panel’s request); Sanofi-Synthelabo v. On, D2003-0871 (WIPO Jan. 16, 2004); AT&T Corp v. Beomjoon Park, No. D2001-0133 (WIPO Mar. 30, 2001) (consolidating separate complaints brought by two trademark owners regarding one domain name, and ordering cancellation of the domain name).
For reasons previously expressed elsewhere, this Panelist is reluctant to order cancellation as a remedy in proceedings under the Policy, particularly where the Complainant has requested transfer of the disputed domain name. See David E. Sorkin, Judicial Review of ICANN Domain Name Decisions, 18 Santa Clara Computer & High Tech. L.J. 35, 41 n.33 (2001), available at http://repository.jmls.edu/facpubs/159/.
The concern in Yahoo! Inc. v. Lam and other cases ordering cancellation presumably is that awarding a domain name to one of two competing trademark owners would be unfair to the other. This Panelist is skeptical of the significance of that concern, and in any event, the concern is inapplicable here, as the two trademark owners are not competitors of one another, and in fact they presumably have already agreed upon terms governing their use of the other’s trademarks. See Cisco WebEx Terms of Service, available at http://www.webex.com/terms-of-service.html. For these reasons, the Panel is of the view that transfer of the disputed domain name is an appropriate remedy in this case.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <graingerwebex.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: December 13, 2013
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