The Lincoln Electric Company v. David Vargo
Claim Number: FA1704001725364
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is David Vargo (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincollnelectric.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 5, 2017.
On April 6, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <lincollnelectric.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 April 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@lincollnelectric.com. Also on April 6, 2017, 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 May 2, 2017, 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 registered its LINCOLN ELECTRIC mark with the United States Patent and Trademark Office (“USPTO”) (Reg. 2,350,082, registered May 16, 2000), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <lincollnelectric.com> is confusingly similar to Complainant’s mark because it merely appends the generic top-level domain (“gTLD”) “.com” to a misspelled version of Complainant’s mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its LINCOLN ELECTRIC mark in any fashion and Respondent is not commonly known by the disputed domain name. Further, the disputed domain name is used to carry out a phishing scheme and its resolving webpage is inactive. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
iii) Respondent has registered and is using the <lincollnelectric.com> domain name in bad faith under Policy ¶ 4(a)(iii). Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the LINCOLN ELECTRIC mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Additionally, Respondent’s use of the disputed domain name in furtherance of a phishing scheme and inactive resolving webpage is evidence of bad faith. Finally, Respondent’s misspelling of Complainant’s mark amounts to typosquatting and is independent evidence of bad faith in the registration and use of the domain name.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered the disputed domain name on January 18, 2017.
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.
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.”).
Complainant contends it registered its LINCOLN ELECTRIC mark with the USPTO (Reg. 2,350,082, registered May 16, 2000), and has rights in the mark under Policy ¶ 4(a)(i). A USPTO registration confers rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the LINCOLN ELECTRIC mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <lincollnelectric.com> is confusingly similar to Complainant’s mark because it merely appends the gTLD “.com” to a misspelled version of the mark. Such alterations are not sufficiently distinguishing to overcome confusing similarity. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Am. Online, Inc. v. David, FA 104980 (Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”). The Panel notes that the disputed domain name differs from Complainant’s mark by the addition the letter “L” between the “L and “N” and the appendage of the gTLD “.com”. Therefore, the Panel concludes that Respondent’s <lincollnelectric.com> is confusingly similar to Complainant’s LINCOLN ELECTRIC mark.
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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its LINCOLN ELECTRIC mark in fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the WHOIS information lists “DAVID VARGO” as the registrant. Therefore, the Panel holds Respondent is not commonly known by the <lincollnelectric.com> name.
Complainant next contends that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent is not using the resolving website of the disputed domain name in connection with an active website. Inactive use of a domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant has attached a screenshot of Respondent’s webpage which does not contain any content. Therefore, the Panel holds that this evidence supports a finding that Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Further, Complainant asserts that Respondent used the disputed domain name as part of a “phishing” scheme intended to deceive a third party into transferring funds. Such use is not a bona fide offering of goods or services or legitimate noncommercial fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). The Panel notes that Complainant has provided evidence of the alleged fraud through a thread of email correspondence. The emails involve a conversation between Respondent posing as an affiliate of Complainant and one of Complainant’s customers. Respondent used the disputed domain name as the suffix of its email address. Therefore, the Panel finds that Respondent has engaged in a fraudulent phishing scheme and therefore, has not used the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii).
Finally, Complainant argues that Respondent’s domain name is a typosqatted version of Complainant’s mark. Taking advantage of Internet users’ typographical errors or typosquatting demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). The Panel notes that Respondent’s <lincollnelectric.com> is a simple misspelling of Complainant’s LINCOLN ELECTRIC mark and differs only by the appendage of the gTLD “.com” and an additional letter “L” between the “L” and “N”. The Panel holds that Respondent has engaged in typosquatting and therefore, lacks rights and legitimate interest under Policy ¶ 4(a)(ii).
Respondent has registered and is using the <lincollnelectric.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially benefit from the goodwill of the LINCOLN ELECTRIC mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends that <lincollnelectric.com> creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of furthering a phishing scheme to obtain a commercial benefit. As such, the Panel concludes that Respondent created a likelihood of confusion and therefore registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent has acted in bad faith because the disputed domain name’s resolving website is inactive. Failure to make an active use of a domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel notes that Complainant has provided screenshots of the disputed domain name’s inactive webpage.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant, the Lincoln Electric Company (“Lincoln Electric”), is an American 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 has created and developed a well-known “LINCOLN ELECTRIC” trademark. It 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; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Complainant argues that Respondent engaged in typosquatting because the <lincollnelectric.com> name is a deliberate misspelling of Complainant’s LINCOLN ELECTRIC mark. Under Policy ¶ 4(a)(iii), Typosquatting is independent evidence of bad faith in the registration and use of a domain name. Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typosquatting, which is the deliberate misspelling of the mark of another in a domain name, done to take advantage of common typing errors made by Internet users in entering into a web browser the name of an enterprise with which they would like to do business online. Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). The Panel notes the relevant misspelling lies in the addition of the letter “L” between the “L” and “N”. Therefore, the Panel concludes that Respondent acted in bad faith in the registration and use of <lincollnelectric.com>.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lincollnelectric.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: May 10, 2017
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