DECISION

 

The Lincoln Electric Company v. Protection of Private Person / Privacy Protection

Claim Number: FA1801001767755

 

PARTIES

Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA.  Respondent is Protection of Private Person / Privacy Protection (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <linc0lnelectric.info>, registered with Registrar of Domain Names REG.RU LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.

 

On January 22, 2018, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <linc0lnelectric.info> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the names.  Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU 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 January 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 20, 2018 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@linc0lnelectric.info.  Also on January 30, 2018, 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 February 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.      Complainant is a multinational 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. Complainant has rights in the LINCOLN ELECTRIC mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,350,082, registered May 16, 2000). See Compl. Annex E. Respondent’s <linc0lnelectric.info> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark because Respondent replaces the letter “o” with a “0” and adds a “.info” generic top level domain (“gTLD”) to Complainant’s mark.

2.    Respondent has no rights or legitimate interests in the <linc0lnelectric.info> domain name because Respondent is not authorized or licensed to use Complainant’s LINCOLN ELECTRIC mark and Respondent is not commonly known by the disputed domain name. Additionally, Respondent attempts to pass off as Complainant through an email phishing scheme and this does not constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use.

 

3.    Respondent attempts to pass off as Complainant through an email phishing scheme and this demonstrates bad faith registration and use. Additionally, Respondent is engaging in typosquatting of Complainant’s LINCOLN ELECTRIC which further indicates bad faith registration and use.

 

B.   Respondent

1.    Respondent did not submit a response.

 

Preliminary Issue: Language of Proceeding

 

Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language.  After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.

 

FINDINGS

1.    Respondent’s <linc0lnelectric.info> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark.

2.    Respondent does not have any rights or legitimate interests in the <linc0lnelectric.info> domain name.

3.    Respondent registered or used the <linc0lnelectric.info> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the LINCOLN ELECTRIC mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with a copy of its USPTO registration for the LINCOLN ELECTRIC mark (e.g., Reg. No. 2,350,082, registered May 16, 2000). See Compl. Annex E. Thus, the Panel finds Complainant has sufficiently demonstrate rights in the LINCOLN ELECTRIC mark per Policy ¶ 4(a)(i).

 

Next, Complainant argues Respondent’s <linc0lnelectric.info> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark because Respondent replaces a letter with a number and adds a gTLD to the mark. Replacing letters with numbers and adding a gTLD does not negate any confusing similarity between a disputed domain name and a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum Jul. 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”); see also 3M Company v Mirco Pinato / Pinato Graphics AG, FA 1569074 (Forum Aug. 12, 2014) (“[I]t seems evident the <scotchcal.info> domain name is confusingly similar to Complainant’s SCOTCHCAL mark under Policy ¶4(a)(i).”). As Complainant contends, Respondent replaces the letter “o” with the number “0” and adds a “.info” gTLD to Complainant’s LINCOLN ELECTRIC mark. Therefore, the Panel finds Respondent’s <linc0lnelectric.info> domain name is confusingly similar to Complainant’s LINCOLN ELECTRIC mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues Respondent has no rights or legitimate interests in the <linc0lnelectric.info> domain name because Respondent is not licensed or authorized to use Complainant’s LINCOLN ELECTRIC mark and Respondent is not commonly known by the disputed domain name. In the event a respondent fails to submit a response to UDRP proceedings, panels have relied on WHOIS information to determine whether respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant.  In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). As Complainant contends, WHOIS information for the disputed domain name identifies Respondent as “Protection of Private Person.” See Compl. Annex D. Thus, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Next, Complainant argues Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use at the <linc0lnelectric.info> domain name because Respondent attempts to pass off as Complainant through an email phishing scheme. Passing off as a complainant through emails in order to gather personal information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum Jul. 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). As Complainant contends, Respondent’s disputed domain name resolves to a blank website with no content. See Compl. Annex N. Additionally, Respondent sent emails to Complainant’s customer that resembles an invoice totaling $151,029.80. See Compl. Annex L. Complainant provides this Panel with copies of the genuine, Pro Forma invoice from Complainant’s business and a copy of the customer’s notification to Complainant about the fraudulent transfer. See Compl. Annexes K and M. Therefore, the Panel finds Respondent attempts to pass off as Complainant as part of an email phishing scheme does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).

 

Registration and Use in Bad Faith

Complainant argues Respondent is engaging in an email phishing scheme in order to pass off as Complainant and this indicates bad faith registration and use. Passing off through emails to a complainant’s customers may indicate bad faith registration and use per Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum Jul. 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). As Complainant contends, Respondent emailed an invoice that mimics Complainant’s original invoice for an amount totaling $151,029.80 to one of Complainant’s customers. See Compl. Annexes K and L. The customer then notified  Complainant about the fraudulent transfer of funds to Respondent’s personal bank account. See Compl. Annex M. Therefore, the Panel finds Respondent’s attempts to pass off as Complainant through emails demonstrates bad faith registration and use per Policy ¶ 4(b)(iv).

 

Additionally, Complainant asserts Respondent engages in typosquatting for Complainant’s LINCOLN ELECTRIC to confuse consumers that Respondent is affiliated with Complainant and this indicates bad faith registration and use. Engaging in typosquatting of a complainant’s mark may indicate bad faith registration and use per Policy ¶ 4(a)(iii). See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum Jul. 20, 2015) (“Finally, under this head of the Policy, it is evident that the <homededpot.com> domain name is an instance of typo squatting, 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.  Typo squatting is independent evidence of bad faith in the registration and use of a domain name.”). As Complainant contends, Respondent replaces the letter “o” with the number “0” in Complainant’s LINCOLN ELECTRIC mark. Therefore, the Panel finds Respondent engages in typosquatting and this sufficiently demonstrates bad faith registration and use per Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <linc0lnelectric.info> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  March 7, 2018