The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru
Claim Number: FA1512001651493
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Privacy protection service - whoisproxy.ru (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolnelectric.info>, registered with Regional Network Information Center, JSC dba RU-CENTER.
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.
Ho Hyun Nahm, Esq., Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2015; the Forum received payment on December 8, 2015. The Complaint was submitted in both English and Russian.
On December 10, 2015, Regional Network Information Center, JSC dba RU-CENTER confirmed by e-mail to the Forum that the <lincolnelectric.info> domain name is registered with Regional Network Information Center, JSC dba RU-CENTER and that Respondent is the current registrant of the name. Regional Network Information Center, JSC dba RU-CENTER has verified that Respondent is bound by the Regional Network Information Center, JSC dba RU-CENTER 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 December 15, 2015, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of January 4, 2016 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@lincolnelectric.info. Also on December 15, 2015, the Russian language 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 January 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the LINCOLN ELECTRIC mark in connection with its business as a manufacturer of various welding products. Complainant has demonstrated rights in the LINCOLN ELECTRIC mark pursuant to its United States Patent and Trademark Office (“USPTO”) registrations, for example, registry number 2,350,082, registered May 16, 2000. Respondent’s <lincolnelectric.info> domain name is confusingly similar to the LINCOLN ELECTRIC mark as it incorporates the mark fully while eliminating spacing between words of the mark and appending the generic top-level domain (“gTLD”) suffix, “.info.”
ii) Respondent has no rights or legitimate interests in respect of the <lincolnelectric.info> domain name. Respondent is not commonly known by the <lincolnelectric.info> domain, nor is it associated with Complainant in any manner. Further, Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use in connection with the disputed domain. Instead, the resolving website has been used to: sell unrelated goods, promote a competitor of Complainant, and display a “Server Error” page.
iii) Respondent has registered and used the <lincolnelectric.info> domain name in bad faith. Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv) as it registered an identical/confusingly similar domain name for commercial profit.
B. Respondent
Respondent has not submitted a Response in this proceeding. This Panel notes that the <lincolnelectric.info> domain name was registered on November 8, 2008.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings in Russian. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 LINCOLN ELECTRIC mark in connection with its business as a manufacturer of various welding products. Complainant purports it has demonstrated rights in the LINCOLN ELECTRIC mark pursuant to its USPTO registrations (e.g., Reg. No. 2,350,082, registered May 16, 2000). Panels have agreed that USPTO registrations suffice, although there may exist a geographic disparity between the parties in dispute. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Nat. Arb. Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). This Panel therefore finds in accordance with Homer TLC, and declare Complainant has established sufficient rights under Policy ¶ 4(a)(i) through its USPTO registration in the LINCOLN ELECTRIC mark.
The second burden of Policy ¶ 4(a)(i) is proof of confusing similarity. Here, Complainant suggests that Respondent’s <lincolnelectric.info> domain name is confusingly similar to the LINCOLN ELECTRIC mark as it incorporates the mark fully while eliminating spacing between words of the mark and appending the gTLD suffix, “.info.” Panels have seen such alterations insignificant in distinguishing a domain name from a mark. See Infineon Technologies AG v. mustafa mashari, FA 1619868 (Nat. Arb. Forum June 27, 2015) (holding “the addition of the “.info” gTLD is seen as irrelevant to its analysis”); see also Gianvito Rossi SRL Unipersonale v. david backhumn, FA 1628059 (Nat. Arb. Forum Aug. 12, 2015) (declaring, “Domain name syntax prohibits spaces in a domain name, so their absence must be disregarded when comparing a mark with a disputed domain name under Policy ¶4(a)(i).”). Accordingly, this Panel agrees that Respondent’s <lincolnelectric.info> domain name is confusingly similar to the LINCOLN ELECTRIC mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 makes the contention that Respondent has no rights or legitimate interests in respect of the <lincolnelectric.info> domain name. In arguing against Respondent’s rights and legitimate interests in the disputed domain, Complainant begins by asserting Respondent is not commonly known by the <lincolnelectric.info> domain, nor is it associated with Complainant in any manner. Panels have viewed such arguments by a complainant while a respondent is in default to be dispositive of a respondent’s failure under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, this Panel agrees with Complainant and finds that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use in connection with the disputed domain. In arguing the prongs of Policy ¶¶ 4(c)(i) and (iii), Complainant directs the Panel’s attention to three exhibits which Complainant alleges demonstrates the various ways in which Respondent has used the <lincolnelectric.info> domain. Subsequent use will be analyzed, infra.
First, Complainant notes a screenshot dating back to September 15, 2015. The webpage seems to be a commercial page offering unrelated products (handbags) for sale. Panels have found such commercial offerings to fail in establishing rights and legitimate interests in some circumstances. See, e.g., Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant).
Second, Complainant provides exhibit, which it alleges is a demonstration of a webpage promoting Complainant’s distributor, captured on October 21, 2015. However, Complainant urges that its distributor (“APEX”) does not own or control the domain. Panels have found promotion/sale of a complainant’s goods or competitive use of a confusingly similar domain without license to indicate a lack of rights or legitimate interests. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); cf. Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Third, Complainant includes screenshot, which was captured on November 10, 2015, and displays a “Server Error” page. Panels have seen failure to make an active use of a disputed domain to fail in evincing a legitimate interest or rights in a domain. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)). In light of the foregoing, the Panel finds there to be sufficient evidence on record to declare Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent has registered and used the <lincolnelectric.info> domain name in bad faith. Complainant simply argues that Respondent has engaged in conduct proscribed by Policy ¶ 4(b)(iv) as it registered an identical/confusingly similar domain name for commercial profit. Complainant has provided Respondent’s past use of the disputed domain name which displays a number of items offered for sale. In Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel found bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting. Here, the Panel agrees that Respondent has registered and subsequently used the disputed domain name in bad faith as per the language of Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lincolnelectric.info> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq. Panelist
Dated: January 13, 2016
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