The Lincoln Electric Company v. Simon Katz / www.longevity-inc.com
Claim Number: FA1901001824395
Complainant is The Lincoln Electric Company ("Complainant"), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Simon Katz / www.longevity-inc.com ("Respondent"), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolnelectric.co>, registered with GoDaddy.com, LLC.
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 Forum electronically on January 9, 2019; the Forum received payment on January 9, 2019.
On January 10, 2019, GoDaddy.com, LLC confirmed by email to the Forum that the <lincolnelectric.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 11, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on January 11, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 February 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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.
Complainant is a global manufacturer of welding, cutting, and joining products founded in 1895. Complainant has manufacturing facilities in North America, Europe, the Middle East, Asia, and Latin America, and has distributors and sales offices in more than 160 countries. Complainant has used the LINCOLN ELECTRIC mark in connection with welding equipment for more than 100 years, and owns longstanding registrations for the mark in the United States and Colombia.
Respondent is the registrant of the disputed domain name <lincolnelectric.co>. Complainant states that Respondent is not associated with it in any way; that Complainant has not licensed or authorized Respondent to register the disputed domain name or use the mark for business purposes; and that Respondent is not commonly known by the disputed domain name. The domain name resolves to a web page that asks whether one wishes to purchase the domain name. Clicking on the link on that page takes the user to a page stating that the domain name is available for sale, with a "minimum offer" of $88. Complainant contacted Respondent regarding Complainant's rights in the LINCOLN ELECTRIC mark, and Respondent replied, "We have not traded on this domain. We are willing to sell the name."
Complainant states that Respondent is a direct competitor of Complainant. Longevity, a competing supplier of welders and related goods, is located at the address that appears in the registration record for the disputed domain name, which also includes references to Longevity's domain names <lwelds.com> and <longevity-inc.com>.
Complainant contends on the above grounds that the disputed domain name <lincolnelectric.co> is confusingly similar to its LINCOLN ELECTRIC mark; 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.
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 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(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 Management, 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.").
The disputed domain name <lincolnelectric.co> corresponds to Complainant's registered LINCOLN ELECTRIC trademark, omitting the space and adding the ".co" top-level domain. These alterations are insufficient to distinguish the domain name from Complainant's mark. See, e.g., RH US, LLC v. Domain Admin / Whois Privacy Corp., FA 1788872 (Forum July 2, 2018) (finding <restorationhardware.co> identical to RESTORATION HARDWARE); Lincoln Electric Co. v. David Vargo, FA 1725364 (Forum May 10, 2017) (finding <lincollnelectric.com> confusingly similar to LINCOLN ELECTRIC). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered 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 Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and Respondent has not made any active use of the domain name.
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 is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."
Respondent, a competitor of Complainant, registered a domain name that corresponds to Complainantís name and registered mark, and has offered the domain name for sale at what the Panel infers to be a premium over Respondentís out-of-pocket costs. Such conduct is indicative of bad faith under the Policy. See, e.g., loanDepot.com, LLC v. David Robnett / Expert Lenders, Inc., FA 1800959 (Forum Sept. 17, 2018) (finding bad faith registration and use where competitor registered domain name incorporating complainantís mark and used it for a parked page offering it for sale). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lincolnelectric.co> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: February 7, 2019
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