The Lincoln Electric Company v. Ema Mowoe / lincolnelectrlc
Claim Number: FA1708001744100
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Ema Mowoe / lincolnelectrlc (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lincolnelectrlc.com>, registered with Wild West Domains, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2017; the Forum received payment on August 10, 2017.
On Aug 15, 2017, Wild West Domains, LLC confirmed by e-mail to the Forum that the <lincolnelectrlc.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 August 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@lincolnelectrlc.com. Also on August 16, 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 September 8, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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, The Lincoln Electric Company, is a multinational global manufacturer of welding, cutting, and joining products including welders, and related equipment. In connection with this business, Complainant has created and developed the well-known LINCOLN ELECTRIC mark. Complainant has rights in the LINCOLN ELECTRIC mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,350,082, registered May 16, 2000). Respondent’s <lincolnelectrlc.com> is confusingly similar to the LINCOLN ELECTRIC mark, as it consists entirely of the mark—less the space—and merely replaces the final letter “i” with an “l” and appends the generic top-level domain (“gTLD”) “.com.” This tactic results in a typosquatted version of Complainant’s legitimate <lincolnelectric.com>.
Respondent has no rights or legitimate interests in the <lincolnelectrlc.com> domain name. Respondent is not commonly known by the disputed domain name, despite listing itself as “Ema Mowoe / lincolnelectlc” at registration. Additionally, Complainant has not authorized or licensed Respondent to use the LINCOLN ELECTRIC mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name is being used as part of a fraudulent phishing scheme to deceive third parties into transferring funds or shipping goods to Respondent. The disputed domain name itself does not resolve to an active website, further evidence of Respondent’s lack of rights and legitimate interests in the same.
Respondent has registered and used the <lincolnelectrlc.com> domain name in bad faith. Respondent’s use of the disputed domain name to impersonate an executive of Complainant for its own commercial benefit is evidence of bad faith per Policy ¶ 4(b)(iv). Additionally, Respondent provided false contact information in procuring the disputed domain name. Further, Respondent’s typosquatting behavior is both evidence of its actual knowledge of Complainant and its rights in the LINCOLN ELECTRIC mark and independent evidence of bad faith per Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <lincolnelectrlc.com> domain name.
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 claims rights in the LINCOLN ELECTRIC mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,350,082, registered May 16, 2000). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel holds that Complainant’s registration of the LINCOLN ELECTRIC mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <lincolnelectrlc.com> domain name is confusingly similar to the LINCOLN ELECTRIC mark, as the disputed domain name is comprised entirely of Complainant’s mark, merely omitting the space, replacing the final “i" with an “l,” and appending the gTLD “.com.” Such changes are not sufficient to distinguish a domain name from a complainant’s mark in a Policy ¶ (a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”); see also Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”). Complainant asserts these changes to a mark amount to typosquatting and increase the confusing similarity of the disputed domain name. The Panel finds <lincolnelectrlc.com> to be confusingly similar to Complainant’s LINCOLN ELECTRIC mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in <lincolnelectrlc.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LINCOLN ELECTRIC mark in any way. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name—despite appearing to be known as such in the WHOIS information—when insufficient evidence exists in the record to indicate the respondent to be so known. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, this Panel finds that, although the registrant organization on the WHOIS record is listed as ‘DTAPLES.COM,’ the evidence on record is sufficient to find that Respondent is not commonly known by the <dtaples.com> domain name.”). The WHOIS information of record identifies Respondent as “Ema Mowoe / lincolnelectrlc.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. 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). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <lincolnelectrlc.com> domain name is evinced by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name as part of a fraudulent phishing scheme in which it impersonates an executive of Complainant in order to deceive third parties into transferring funds or shipping goods to Respondent. A respondent’s use of a disputed domain name to pass itself off as an employee or executive of a complainant by means of an email address hosted at the disputed domain name is not a use indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum, Nov. 30, 2016) (finding Respondent’s use of the disputed domain name to pose as Complainant’s CEO by means of an email address at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer was neither a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides printouts of emails in which emails sent from an email address associated with the disputed domain name solicit shipments and payments from various vendors, while using a signature block naming “Michael J. Whitehead,” an executive of Complainant. The Panel finds that Respondent’s passing off activity indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent’s use of the <lincolnelectrlc.com> domain name amounts to a phishing scheme and is further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name. Use of a domain name in a phishing scheme can be further evidence of a Respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Respondent uses the disputed domain name to provide an email address used to send emails fraudulently soliciting orders or payments from third parties. The Panel finds this to be evidence of Respondent’s lack of rights and legitimate interests per Policy ¶ 4(a)(ii).
Complainant also alleges that the disputed domain name does not resolve to an active website, which is further evidence of Respondent’s lack of rights and legitimate interests. Failure to make an active use of a disputed domain name can evince such a lack per Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). Complainant claims the disputed domain name does not resolve to an active website. The Panel has taken this evidence into account and determines Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant has proved this element.
Complainant contends that Respondent’s impersonation of an executive of Complainant in emails designed to fraudulently solicit deposits and goods shipments from third parties evinces Respondent’s bad faith. Such use of a domain name can be used to support a finding of bad faith registration and use per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Respondent sent emails from an email address hosted at the <lincolnelectrlc.com> domain name. The Panel finds Respondent to have registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the LINCOLN ELECTRIC mark. Complainant argues that Respondent’s use of emails to impersonate an executive of Complainant indicates that Respondent had actual knowledge of Complainant's mark and rights. Complainant contends that Respondent’s typosquatted domain name is further evidence of such knowledge. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Complainant contends that Respondent’s typosquatted domain name is itself evidence of Respondent’s bad faith registration and use. The change of a single letter of a mark to create a domain can be considered typosquatting and is evidence of bad faith registration and use per Policy ¶ 4(a)(iii). See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Respondent’s <lincolnelectrlc.com> differs from Complainant’s LINCOLN ELECTRIC mark only by omission of the space, the change of one letter, and addition of a gTLD. The Panel finds Respondent to have engaged in typosquatting and therefore to have registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <lincolnelectrlc.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 8, 2017
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