DECISION
W. R. Grace & Co.-Conn. v. W. R Grace and Co. / graceincorporated
Claim Number: FA2404002091601
PARTIES
Complainant is W. R. Grace & Co.-Conn. ("Complainant"), represented by Matthew D. Witsman of Foley & Lardner LLP, District of Columbia, USA. Respondent is W. R Grace and Co. / graceincorporated ("Respondent"), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <graceincorporated.com>, registered with Tucows Domains Inc.
PANEL
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 3, 2024. Forum received payment on April 3, 2024.
On April 4, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <graceincorporated.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2024 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@graceincorporated.com. Also on April 9, 2024, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Founded in 1854, Complainant, W. R. Grace & Co.-Conn., is a global leader in specialty chemicals and materials and has been providing innovative products, technologies and services to many of the world's leading energy, petrochemical, and industrial companies for more than seventy years. Complainant is known by consumers around the world as "W. R. Grace" and "Grace". It operates the website at "www.grace.com".
Complainant has rights in the well-known GRACE mark through numerous trademark registrations around the world, including with the United States Patent and Trademark Office ("USPTO"). Respondent's <graceincorporated.com> domain name is confusingly similar to Complainant's GRACE mark.
While Respondent appears to be known as the name "W. R Grace" and affiliated with the organization "graceincorporated," Respondent lacks rights or legitimate interests in the <graceincorporated.com> domain name because Respondent is not affiliated with Complainant and lacks authorization to use Complainant's GRACE mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to send emails impersonating Complainant and one of its employees in an effort to secure financial payments.
Respondent registered the <graceincorporated.com> domain name in bad faith with actual knowledge of Complainant's rights in the GRACE mark and uses it in bad faith in connection with a fraudulent ruse to impersonate Complainant and its employee in an effort to perpetrate payment fraud, all while utilizing the GRACE mark without authorization.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has established all the elements entitling it to relief.
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."
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) 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 as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ('Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint').
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the GRACE mark through numerous registrations, including with the USPTO (e.g., Reg. No. 1,437,819, registered on April 28, 1987). The Panel finds Respondent's <graceincorporated.com> domain name to be confusingly similar to Complainant's mark, only differing by the addition of the generic word "incorporated", which does not distinguish the domain name from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <graceincorporated.com> domain name was registered in the name W. R Grace and Co. / graceincorporated on January 18, 2024, many years after Complainant has shown that its GRACE mark had become well-known worldwide. There is no evidence that Respondent is commonly known by the W. R Grace and Co. or graceincorporated names. The domain name does not resolve to an active website. However, Complainant has shown that the domain name has been used to send emails from kerrie@graceincorporated.com (Kerrie being the first name of one of Complainant's employees) and from jobs@graceincorporated.com to persons in the United States and Japan, seeking financial payments.
These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <graceincorporated.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's well-known GRACE mark when Respondent, using the name of Complainant, registered the <graceincorporated.com> domain name and that Respondent registered and is using the domain name in bad faith for the purpose of phishing for money by masquerading as Complainant and an employee of Complainant.
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <graceincorporated.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: May 2, 2024
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