The Lincoln Electric Company v. Lisa Katz / Domain Protection LLC
Claim Number: FA1509001640294
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), represented by Gary N. Schepps, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolnelectricwelders.com>, registered with Fabulous.com Pty Ltd.
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.
Complainant submitted a Complaint to the Forum electronically on September 30, 2015; the Forum received payment on September 30, 2015.
On October 2, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <lincolnelectricwelders.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 October 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 2015 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@lincolnelectricwelders.com. Also on October 5, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant has rights in the LINCOLN ELECTRIC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,350,082, registered on May 16, 2000).
2. Respondent’s <lincolnelectricwelders.com> domain name is confusingly similar to the LINCOLN ELECTRIC mark because it contains the mark, minus the space between the words, while adding only the descriptive term “welders” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent is not commonly known by the <lincolnelectricwelders.com> domain name because Complainant has not authorized Respondent to use the LINCOLN ELECTRIC mark and because there is nothing in the available WHOIS information to suggest Respondent is so commonly known.
4. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <lincolnelectricwelders.com> domain name resolves to a website containing links to third parties.
5. Respondent uses the <lincolnelectricwelders.com> domain name in bad faith because it uses the domain in a way designed to foster confusion about the association between Complainant and the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LINCOLN ELECTRIC mark. Respondent’s domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lincolnelectricwelders.com> domain name, and that Respondent registered and uses the domain name 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 has rights in the LINCOLN ELECTRIC mark through its registration with the USPTO (e.g., Reg. No. 2,350,082, registered on May 16, 2000). Registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant alleges that Respondent’s <lincolnelectricwelders.com> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark because it contains the mark, minus the space between the words, while adding only the term “welders” and the gTLD “.com.” As gTLDs are required in domains, and spaces cannot be displayed, thus, such changes are irrelevant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Complainant has also provided evidence that the term “welders” is descriptive of its business operations. Adding descriptive terms to a mark in the creation of a domain name can lead to a confusingly similar domain name. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <lincolnelectricwelders.com> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. 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 alleges that Respondent is not commonly known by the <lincolnelectricwelders.com> domain name because Complainant has not authorized Respondent to use the LINCOLN ELECTRIC mark and because there is nothing in the available WHOIS information to suggest Respondent is so commonly known. The WHOIS information lists “Lisa Katz” as Registrant. In similar cases it has been found that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). As such, the Panel finds that Respondent is not commonly known by the <lincolnelectricwelders.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <lincolnelectricwelders.com> domain name resolves to a website containing links to third parties such as “Lincoln Wire Feed Welders,” “Divorce Las Vegas,” and “Fabrication Welding Jobs.” Hosting third party links, whether related to or unrelated to a complainant, has been found to show a lack of bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also 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). Accordingly, the Panel finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <lincolnelectricwelders.com> domain name in bad faith because it uses the domain in a way designed to foster confusion about the association between Complainant and the domain name. Complainant argues that the domain name resolves to a website containing third party links and Complainant has provided a screenshot of the resolving website containing links such as “Lincoln Wire Feed Welders,” “Divorce Las Vegas,” and “Fabrication Welding Jobs.” Hosting links, whether related to or unrelated to a complainant, can constitute bad faith use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Because the Panel finds enough evidence to establish that these links foster confusion regarding Complainant’s relationship with the website, the Panel finds that Respondent uses the <lincolnelectricwelders.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lincolnelectricwelders.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 9, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page