The Lincoln Electric Company v. Victor Beschapochniy / TOVARISTVO Z OBMEZhENOJu ViDPOViDAL'NiSTJu TORGOVIJ DiM NiSA
Claim Number: FA1611001702337
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Victor Beschapochniy / TOVARISTVO Z OBMEZhENOJu ViDPOViDAL'NiSTJu TORGOVIJ DiM NiSA (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <линкольнэлектрик.net>, registered with Internet Invest, Ltd. dba Imena.ua.
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 Forum electronically on November 10, 2016; the Forum received payment on November 10, 2016. The Complaint was submitted in both Russian and English.
On November 11, 2016, Internet Invest, Ltd. dba Imena.ua confirmed by e-mail to the Forum that the <линкольнэлектрик.net> domain name is registered with Internet Invest, Ltd. dba Imena.ua and that Respondent is the current registrant of the name. Internet Invest, Ltd. dba Imena.ua has verified that Respondent is bound by the Internet Invest, Ltd. dba Imena.ua 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 17, 2016, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of December 7, 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@линкольнэлектрик.net. Also on November 17, 2016, 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 December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
I. Complainant Has Rights in Its LINCOLN ELECTRIC Marks.
Complainant, The Lincoln Electric Company (“Lincoln Electric”), is an American-based multinational global manufacturer of welding, cutting, and joining products, including welders, welding heads, electrodes, transformers, power supplies and controllers for electrical arc welders, robotic welding systems, and plasma and oxy-fuel cutting equipment. The company was founded in 1895 and has a worldwide network of distributors and sales offices covering more than 160 countries, with manufacturing locations in North America, Europe, the Middle East, Asia, and Latin America.
Lincoln Electric owns the well-known “LINCOLN ELECTRIC” trademark and brand name. Lincoln Electric has used and actively promoted the LINCOLN ELECTRIC marks in connection with welding equipment for more than 100 years, with U.S. trademark registrations claiming first use dates dating back to 1915. It has registered its “LINCOLN ELECTRIC” trademarks worldwide. Lincoln Electric’s registered trademarks are registered on the Principal Register of the United States Patent and Trademark Office (“USPTO”), the European Community, the Russian Federation, and the Ukraine (where Respondent appears to be domiciled).
Lincoln Electric’s rights in its LINCOLN ELECTRIC marks have become incontestable pursuant to 15 U.S.C. § 1065. Among other benefits, this constitutes “conclusive evidence” of Lincoln Electric’s ownership of the marks and its exclusive rights to use them. 15 U.S.C. § 1115(b).
Lincoln Electric hosts a website appearing at a domain name that incorporates its LINCOLN ELECTRIC mark, namely <lincolnelectric.com>.
II. Lincoln Electric is Entitled to Bring this Action Due to Its Rights in The LINCOLN ELECTRIC Marks.
Lincoln Electric has standing to challenge Respondent’s registration of the<линкольнэлектрик.net> domain name under UDRP Rule 3(a) and the Forum’s Supplemental Rules 1(e). UDRP Rule 3(a) states that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as “the single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Based on its established rights in its LINCOLN ELECTRIC marks, Lincoln Electric brings this action as a Complainant and disputes Respondent’s registration and use of the <линкольнэлектрик.net> domain name.
FACTUAL AND LEGAL GROUNDS
I. Respondent’s <линкольнэлектрик.net> Domain Name is Confusingly Similar to Lincoln Electric’s LINCOLN ELECTRIC Marks.
Lincoln Electric has established rights in its LINCOLN ELECTRIC marks pursuant to UDRP Policy ¶4(a)(i) through registration of the marks with the USPTO and other trademark registries. See The Lincoln Elec. Co. v. Privacy Protec. Svc. – whoisproxy.ru, FA1512001651493 (Nat. Arb. Forum Jan. 13, 2016) (recognizing Complainant’s rights in LINCOLN ELECTRIC trademark); Griffin Tech., Inc. Griffin Tech., Innomed Techs., Inc. v. DRP Servs., FA221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL- AIRE mark with the USPTO establishes Complainant's rights in the mark.”); Vivendi Universal Games v. XBNetVentures Inc., FA198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Moreover, Lincoln Electric has common law rights in its LINCOLN ELECTRIC marks dating back more than 100 years in the U.S.
Respondent’s accused domain name is confusingly similar to the LINCOLN ELECTRIC marks. The domain name consists of the Cyrillic transliteration of LINCOLN ELECTRIC. This constitutes confusing similarity for UDRP purposes. See Yahoo! Inc. v. Sergey Korshunov, FA0804001176666 (Nat. Arb. Forum May 21, 2008) (finding YAHOO and its Cyrillic transliteration confusingly similar); Dow Corning Corp. v. Zhongshan Daokangning Youjigui Co. Ltd., FA1309001519356 (Nat. Arb. Forum Nov. 4, 2013) (finding DOW CORNING and its transliteration in Chinese characters confusingly similar). The addition of the .net generic top- level domain does not distinguish the accused domain name. See BEA Systems, Inc. v. Ahmed Bouras, FA0203000105951 (Nat. Arb. Forum Apr. 26, 2002) (“The addition of a generic top- level domain name [.info] to another’s mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity.”) As other Panels have noted, “translating a mark into another language and adding a top-level domain does not negate a finding of confusing similarity.” Universal Protein Supplements Corp. v. Daniel Cabreira, FA0912001299478 (Nat. Arb. Forum Feb. 10, 2010). Lincoln Electric respectfully asks the panel to find that Respondent’s accused domain name is confusingly similar to Lincoln Electric’s registered LINCOLN ELECTRIC marks according to UDRP Policy ¶4(a)(i).
II. Respondent Has No Rights in the LINCOLN ELECTRIC Marks.
A. Lincoln Electric Has Not Licensed or Authorized Respondent to Use the LINCOLN ELECTRIC Marks As Domain Names.
Respondent is a Lincoln Electric distributor in the Ukraine. However, its distributor agreement does not allow Respondent to register Lincoln Electric’s trademarks as domain names. To that end, Lincoln Electric has repeatedly warned Respondent to cease-and-desist from its unauthorized registration and use of the disputed domain name. These warnings came directly from Complainant in 2014, 2015, and 2016. Respondent refused to comply. As a result, in August 2016, Complainant retained counsel in Russia to send a formal demand letter requesting Respondent to transfer the domain name. Respondent failed to comply.
Respondent’s conduct is particularly problematic because Respondent has used the domain name, which translates to “Lincoln Electric .net,” to sell Complainant’s competitors’ products. A screen shot of Respondent’s home page shows not only LINCOLN ELECTRIC products, but also products manufactured and sold by Lincoln Electric’s direct competitors. Respondent is not permitted to use the LINCOLN ELECTRIC marks to sell competitors’ products. Moreover, such use would undoubtedly cause confusion among consumers.
Apart from its distributor agreement, which provides for certain limited uses of the LINCOLN ELECTRIC marks, Respondent has no rights or legitimate interests in the accused domain name.
B. Respondent is Not Commonly Known by the Disputed Domain Name.
Lincoln Electric’s federal trademark registrations covering the LINCOLN ELECTRIC marks provide it with the exclusive right to use the mark in connection with the goods and services identified in the registrations. 15 U.S.C. § 1057(b). Consequently, Respondent is not “commonly known” by the domain name, which wholly incorporates “Lincoln Electric.” There is no basis for declaring Respondent as commonly known by the disputed domain name per UDRP Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA699652 (Nat. Arb. Forum July 7, 2006).
C. Respondent is Not Making a Legitimate Noncommercial or Fair Use of the Domain Name.
Respondent has used the disputed domain name to link to a commercial page displaying products offered by Complainant and Complainant’s direct competitors. A screen grab showing welding-related products manufactured by competitor ESAB, which prominently appear on the site associated with the disputed domain name, is attached.
To be clear, Respondent has no authority under its Lincoln Electric distributor agreement to register domain names incorporating the LINCOLN ELECTRIC marks. Other panels have held that unauthorized use by distributors is not “legitimate” use. See, e.g., Associated Materials, Inc. v. Perma Well, Inc., FA154121 (Nat. Arb. Forum May 23, 2003) (finding that although respondent was a distributor, it did not have permission to use the complainant’s mark in its domain name).
As a result, Respondent is not making a legitimate noncommercial use of the disputed domain name. Instead, Respondent is using the LINCOLN ELECTRIC marks to entice consumers to visit its website. See Chanel v. Estco, WIPO Case No. D2000-0413 (finding <chanelstore.com> and <chanelfashion.com> confusingly similar to complainant’s mark CHANEL and that respondent’s intention to create a public use database of Chanel products/stores did not constitute fair use, as respondent would be using the CHANEL trademark in order to attract the public to his web site); see also SCOLA v. Brian Wick d/b/a CheapYellowPages.com, FA 115109 (Nat. Arb. Forum Feb. 1, 2008) (finding that respondent’s domain name “scola.com” included links that trade off the trademark qualities of the term “SCOLA”, in which complainant held registered trademark rights). There is no basis for finding that Respondent is making a noncommercial fair use per UDRP Policy ¶4(c)(iii).
III. Respondent Registered and is Using the Disputed Domain Name in Bad Faith.
Respondent’s registration of the disputed domain name occurred long after Lincoln Electric began using its LINCOLN ELECTRIC marks and after it registered its LINCOLN ELECTRIC marks. It continues despite Complainant’s warnings that such registration and use is not permitted under the distribution agreement, and despite Complainant’s demands for transfer. There is no dispute that Complainant Lincoln Electric has prior rights.
Respondent’s registration and use of the disputed domain name, which wholly- incorporates the LINCOLN ELECTRIC trademark, is likely to confuse consumers into believing that the content appearing under the domain is somehow affiliated, sponsored or approved by Lincoln Electric. See Nortel Networks Ltd. v. Raynard Grenier, FA0201000104104 (Nat. Arb. Forum Mar. 15, 2002) (finding initial interest confusion created by Respondent’s .info domain name). The harm is particularly acute, here, because the disputed domain name links to a website offering products manufactured by Complainant’s direct competitors. For example, the website shows products offered by ESAB, a Lincoln Electric competitor. Consumers visiting a website linked to the Cyrillic transliteration of “LINCOLN ELECTRIC .net” are likely to mistakenly believe that Complainant has sponsored or approved the competing ESAB products appearing on the site.
This constitutes bad faith pursuant to UDRP Policy ¶4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Language of Proceedings
Pursuant to Rule 11(a), the Panel determines the language requirement was satisfied by the Russian language Complaint and Commencement Notification, and, absent a Response, determines the remainder of the proceedings may be conducted in English.
(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 Complainant must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 registered its LINCOLN ELECTRIC mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,350,082, registered May 16, 2000), inter alia. Registering a mark with a governmental authority (such as the USPTO) demonstrates rights in a mark, even when the registration is not in Respondent’s home country. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (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).”). In this case, Complainant also registered its mark in the European Union, Russia and the Ukraine (Respondent is located in the Ukraine). Complainant has rights in its LINCOLN ELECTRIC mark.
Complainant claims Respondent’s <линкольнэлектрик.net> domain name is confusingly similar to its LINCOLN ELECTRIC mark. “линкольнэлектрик” is the Cyrillic translation for Complainant’s LINCOLN ELECTRIC mark. The “.net” gTLD does nothing to distinguish the domain name from its mark. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Likewise, a space is a prohibited character in a domain name and its omission must be disregarded under a Policy ¶4(a)(i) analysis. Although a Cyrillic translation may not visually appear to be confusingly similar to a complainant’s mark, the transliteration of a complainant’s mark in Cyrillic can be confusingly similar. See Dr. Ing, h.c. F. Porsche AG, v. Moniker Privacy Services / Sergey Korshunov, D2011-0100 (WIPO Apr. 8, 2011) (Holding <порше.com> as a Cyrillic translation of the PORSCHE mark and confusingly similar. The “Panel has inferred that an ordinary Internet user reading the domain name in Cyrillic, would be likely to associate it with the Complainant’s mark. The circumstances of this case therefore indicate that Internet users would be confused about the relationship between the disputed domain name and the Complainant’s mark. Ultimately, the focus of paragraph 4(a)(i) of the Policy relates to confusion over the association of the disputed domain name with the Complainant’s mark.”). The <линкольнэлектрик.net> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark under Policy ¶4(a)(i) because it is a translated version of Complainant’s mark.
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 (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 (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 has no rights or legitimate interests in the <линкольнэлектрик.net> domain name. Complainant has not licensed or otherwise authorized Respondent to use its LINCOLN ELECTRIC mark or any translation thereof in any fashion. Respondent is not commonly known by the disputed domain name. The WHOIS information for the domain name in question lists “Victor Beschapochniy” as the registrant with “TOVARISTVO Z OBMEZhENOJu ViDPOViDALNiSTJu TORGOVIJ DiM NiSA” organization. Panels frequently find a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶4(c)(ii)). There is no obvious connection between the “Victor Beschapochniy” name and the disputed domain name. Respondent is not commonly known by <линкольнэлектрик.net>.
Complainant claims Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶4(c)(iii). Respondent is using <линкольнэлектрик.net> to directly compete with Complainant’s welding business. According to the screen captures of the disputed domain name submitted by Complainant, Respondent is apparently offering Complainant’s products and its competitors (it should be noted this Panel cannot read Russian). When a respondent uses a confusingly similar domain name to compete with the complainant, it does not confer any rights or interests upon the respondent. See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Respondent’s use of <линкольнэлектрик.net> is not a bona fide offering of goods and services or a legitimate noncommercial under Policy ¶¶4(c)(i) and (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <линкольнэлектрик.net> domain name in bad faith. The domain name is a Cyrillic translation of its LINCOLN ELECTRIC mark. Respondent certainly knows the existence and scope of Complainant’s mark because Respondent is one of Complainant’s distributors. Respondent is selling Complainant’s competitors’ goods at the disputed domain name. This is a bad faith attempt to attract Internet users for commercial gain under Policy ¶4(b)(iv). Respondent’s selling of competing products in conjunction with the confusingly similar domain name creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Respondent is commercially gaining from sales made on the confusingly similar domain, which leads to the inevitable conclusion Respondent directly competes with Complainant for commercial gain. Respondent registered and uses the domain name in bad faith under Policy ¶4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”).). Respondent’s registration and use of <линкольнэлектрик.net> was in bad faith under Policy ¶4(b)(iv)..
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 <линкольнэлектрик.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 14, 2016
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