The Lincoln Electric Company v. Wu Kun
Claim Number: FA1612001708751
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Wu Kun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolnelectric.xyz>, (‘the Domain Name’)registered with Chengdu West Dimension Digital Technology Co., Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 20, 2016; the Forum received payment on December 20, 2016.
On December 22, 2016, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <lincolnelectric.xyz> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 December 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2017 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.xyz. Also on December 22, 2016, 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 January 24, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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
Complainant’s contentions can be summarised as follows:
These proceedings should be conducted in English because Respondent is clearly conversant in the English language. Respondent offered to sell the Domain Name to Complainants in English. The Domain Name itself is in an English language domain.
Complainant is a multinational manufacturer of welding, cutting and joining products, founded in 1895. Complainant has registered its LINCOLN ELECTRIC trade mark worldwide including in the USA where first use in commerce is recorded as dating back to 1915, and China where Respondent is based registered in 2002.
The Domain Name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark. The Domain Name features this mark in its entirety. The addition of the .xyz generic top level domain does not distinguish the Domain Name from Complainant’s mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not associated with Complainant in any way and Complainant has not licensed or authorised Respondent to register the Domain Name or use the LINCOLN ELECTRIC mark. Respondent is not commonly known by the Domain Name.
Respondent has used the Domain Name to link to a commercial page displaying welding products manufactured by Complainant’s competitors. Respondent also attempted to sell the Domain Name to Complainant for US $650, an amount far exceeding Respondent’s out of pocket costs in registering it. Such use is not a legitimate or fair non commercial use.
Offering to sell the Domain Name to Complainant for US $650 is an amount well in excess of Respondent’s out of pocket costs associated with registering the Domain Name. This constitutes bad faith under Policy 4 (b)(i).
In addition Respondent's use in connection with competing welding products is likely to cause confusion and therefore constitutes bad faith under Policy 4 (b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered its LINCOLN ELECTRIC trade mark worldwide including in the USA where first use in commerce is recorded as dating back to 1915, and China where Respondent is based where the mark was registered in 2002.
The Domain Name registered in 2016 has been pointed to a commercial site offering third party products, including welding products that compete with the products of Complainant. Respondent has offered to sell the Domain Name to Complainant for $US 650.
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 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.”).
Pursuant to UDRP Rule 11 (a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest Respondent is conversant and proficient in the English language. After considering all the circumstances of the case including that the Domain Name is registered in an English language domain, that the contents on the web site attached to the Domain Name are in English and that Respondent has offered to sell the Domain Name to Complainant in English the Panellist decides that the proceedings should be in English.
Identical and/or Confusingly Similar
The Domain Name consists of Complainant's LINCOLN ELECTRIC mark (which is registered in the USA for welding products with first use recorded as 1915 and in China where Respondent is based from 2002) and the gTLD .xyz.
The gTLD .com does not serve to distinguish the Domain Name from the LINCOLN ELECTRIC mark, which is the distinctive component of the Domain Name. See Kellogg North America Company v Private Registration, FA 1613347 (Forum June 2, 2015) (finding that the Kellogg's .xyz domain name is identical to the complainant’s KELLOGGS mark under policy 4 (a)(i). )
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose of the Policy to a mark in which Complainant has rights.
As such the Panel holds that Complainant has satisfied the first limb of the Policy.
Rights or Legitimate Interests
Respondent has not provided any response in these proceedings. Respondent does not appear to have any trade marks associated with the name LINCOLN ELECTRIC. There is no evidence that it is commonly known by this name and it does not have any consent from Complainant to use this name.
It does not appear to have used the Domain Name for any bona fide offering of services of its own. The Domain Name has been pointed to a page featuring links to third party commercial sites including competitors of Complainant. See Ashley Furniture Industries, Inc. v domain admin/private registrations aktien gesellschaft, FA 1506001626253 (Forum July 29, 2015)(Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The panel finds this does not constitute a bona fide offering or a legitimate non commercial or fair use).
Given the evidence that the Domain Name was registered after Complainant had established rights in the LINCOLN ELECTRIC mark and the Domain Name was offered for sale, there is no credible evidence why the Domain Name would be appropriate for registration and such use and Respondent has given no credible explanation as to why it should be entitled to register a domain name effectively consisting of Complainant’s mark. See University of Rochester v Park HyungJin, FA 1410001587458 (Forum Dec. 9, 2014)(The Panel finds respondent’s willingness to sell in excess of out of pocket registrations costs weighs against respondent’s case for rights or legitimate interests in the domain name)
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i))
Respondent has offered the Domain Name for sale to Complainant for US$650 and has given no satisfactory reason why it has a legitimate interest in a domain name comprising the distinctive trade mark belonging to Complainant, and why the Domain Name was offered for sale to Complainant for a sum in excess of likely costs of domain name registration. The use of the Domain Name to point to commercial sites including those of competitors of Complainant also suggests that Respondent is aware of Complainant and its business. Accordingly, the Panel finds on the balance of probabilities that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant who is the owner of the trademark or to a competitor of Complainants, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; See Google Inc. v Trademark Worx LLC, FA 1101001370035 (Forum Mar. 16, 2010)(ordering transfer). The Panel, therefore, finds that bad faith has been demonstrated under s 4(b)(i) of the Policy. There is, therefore no need to consider further alleged grounds of bad faith registration and use.
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.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 27, 2017
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