W.W. Grainger, Inc. v. Above.com Legal
Claim Number: FA1105001390105
Complainant is W.W. Grainger, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <owagrainger.com>, registered with Above, Pty 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 23, 2011; the National Arbitration Forum received payment on May 31, 2011.
On May 23, 2011, Above, Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <owagrainger.com> domain name is registered with Above, Pty Ltd. and that Respondent is the current registrant of the name. Above, Pty Ltd. has verified that Respondent is bound by the Above, Pty 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 June 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 2011 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@owagrainger.com. Also on June 1, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <owagrainger.com> domain name is confusingly similar to Complainant’s GRAINGER mark.
2. Respondent does not have any rights or legitimate interests in the <owagrainger.com> domain name.
3. Respondent registered and used the <owagrainger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, W.W. Grainger, Inc., owns the GRAINGER mark. Complainant uses this mark in connection with the production, promotion, sale, and distribution of facilities, maintenance, repair, and operating supplies. Complainant owns multiple trademark registrations for the GRAINGER mark with the United States Patent and Trade Office (“USPTO”) (e.g., Reg. No. 1,559,199 issued October 13, 1989).
Respondent, Above.com Legal, created the disputed domain name on February 16, 2010. The <owagrainger.com> domain name is used as a pay-per-click website for services both similar to and dissimilar to the services Complainant offers.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant contends that it has rights in the GRAINGER mark as a result of registration with the USPTO. Previous panels have held that registration with a federal trademark authority is sufficient to establish rights in a mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Complainant has provided evidence of its federal trademark registrations with the USPTO (e.g., Reg. No. 1,559,199 issued October 13, 1989) for its GRAINGER mark. As such, the Panel finds that Complainant has established rights in the GRAINER mark pursuant to Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <owagrainer.com> domain name is confusingly similar to its GRAINER mark. The only changes made to the fully-incorporated mark in the domain name are the additions of a generic top-level domain (“gTLD”) and the string of letters “owa.” Past panels have found that neither of these changes is sufficient to differentiate a disputed domain from a complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks”). As there are no additional differentiating characteristics of the domain name than the added gTLD and string of letters, the Panel finds that the <owagrainer.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent has no rights and no legitimate interests in the <owagrainer.com> domain name. After Complainant has supported this by making a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has made a prima facie case in support of its assertions. The Panel may assume, as a result of Respondent’s failure to respond to the Complaint, that Respondent does not have rights or legitimate interests in disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true”). The Panel will review the record, however, to determine whether evidence exists to contradict Complainant’s findings.
Complainant next contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). Prior panels have determined that a respondent’s WHOIS information is heavily influential in determining whether a respondent is commonly known by a disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name”). Respondent’s WHOIS information in no way suggests that it is commonly known by the <owagrainer.com> domain name, and there is no additional information in the record to suggest such a finding. As a result, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
The disputed domain name resolves to a website which features a collection of pay-per-click links and advertisements. Complainant argues that this registration and use of the disputed domain name is in violation of Policy ¶¶ 4(c)(i) and 4(c)(iii) as neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Previous panels have found that the use of a domain name for pay-per-click links and advertisements often demonstrates a violation of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). The disputed domain name resolves to a website solely dedicated to pay-per-click links and advertisements to Complainant’s competitors and others. As such, the Panel finds that Respondent’s use of the <owagrainer.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) is met.
It has been established by prior panels that, where an intentionally confusingly similar domain name is used in a way which disrupts a complainant’s business, the domain name was registered and used in bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Respondent’s domain name provides links and advertisements to third-parties, some of which provide similar services to those which Complainant provides. The similarity of services provided by Complainant and some of the third-parties that the disputed domain name advertises and links to puts Respondent and Complainant in competition. Complainant’s business is disrupted as a result. The Panel finds that Respondent’s use of a confusingly similar domain name intentionally so as to divert Internet users away from Complainant’s website and to Complainant’s competitors’ websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s use of the confusingly similar domain name was for the purpose of attracting Internet users for commercial gain and was therefore in violation of Policy ¶ 4(b)(iv), which prohibits bad faith registration and use. Panels have previously found bad faith registration and use of a confusingly similar domain name solely because of the use of the disputed domain name for the attraction for commercial gain based on Internet user confusion as to the complainant’s affiliation with the disputed domain name. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). As determined earlier, the disputed domain name is confusingly similar to Complainant’s GRAINER mark. Respondent’s sole use of the disputed domain name was to take advantage of the confusing similarity for monetary gain. The Panel finds that Respondent’s registration and use of the disputed domain name was done in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <owagrainger.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 6, 2011
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