W.W. Grainger, Inc. v COMDOT INTERNET SERVICES PRIVATE LIMITED.

On October 29, 2007, the National Arbitration Forum received electronic and hard copies of the Amended Complaint.

On October 30, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 19, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@wwwgranger.com by e-mail.

A Response was received on November 22, 2007. The Response was deficient under ¶ 5(a) of the Rules as it was received after the Response deadline.

On November 28, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. O’Connor as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that, for at least eighty (80) years, its primary corporate name, primary trademark and house mark has been GRAINGER, or slight variations thereof. Complainant contends that for at least eleven (11) years, it has used the trademark GRAINGER.COM. Complainant contends that it has used and continues to use the trademarks GRAINGER and GRAINGER.COM (the “Trademarks”) in connection with supplying facilities maintenance products to businesses and institutions.

Complainant claims ownership of numerous trademark registrations for the Trademarks, including U.S. Registrations Nos. 1,559,199, 1,747,557, 2,039,641, 2,128,519, 2,194,993, 2,519,045, 2,998,326, 3,053,642, 3,130,982, 3,130,983, 3,256,911, and 3,256,912, and India Registration Nos. 334,538 and 437,017.

Complainant contends that it owns the domain name <grainger.com>, and uses that domain name at a Website.

Complainant supports these contentions by a list of its worldwide registrations for the Trademarks, by copies of the noted registrations, and by a copy of a WHOIS listing for its domain name registration.

Complainant argues that the domain name at issue is confusingly similar to the Trademarks and to its domain name.

In support of this argument, Complainant contends that the domain name at issue is nearly identical to the Trademarks with only minor typographical errors. Complainant contends that the domain name at issue is a common mistake made by many people who inadvertently omit the period after “WWW” and the letter “I” when attempting to visit Complainant’s Web site at <www.grainger.com>. Complainant cites various cases for the proposition that it is well-settled that a misspelling of a trademark is not a sufficient difference to ameliorate confusion.

In support of this argument, Complainant contends that the Respondent has engaged in typosquatting, a practice in which a registrant deliberately introduces slight deviations into famous marks for commercial gain. Complainant cites various cases for this proposition.

Complainant argues that Respondent has no legitimate interests in the domain name at issue. Complainant bases this argument partly upon the prior statutory and common law rights in the Trademarks, established by Complainant’s contended continuous use of the marks in commerce for many years.

Complaint also argues that Respondent has not used the domain name at issue for any legitimate purpose, and, upon information and belief, has no intention of using the domain name at issue as anything other than a parked page to generate income.

Complainant cites a case for the proposition that the mere registration of a domain name is insufficient to confer rights or legitimate interests in the domain name.

Complainant points out that the similarity of the domain name at issue to the Trademarks and the lack of use of a Web site employing that domain name supports a finding that Respondent’s use of the domain name is not a bona fide offering of goods or services. Complainant cites various cases for this proposition.

Complainant contends, on information and belief, that Respondent’s only use of the domain name is as an Internet portal to divert Internet users to numerous third party web sites. In support of this contention, Complainant provides numerous pages found at a Web site employing the domain name at issue. Complainant cites various cases for the proposition that redirection of Internet users is not a bona fide offering of goods and services and that diversion of Internet users does not establish rights or legitimate interests in a domain name.

Complainant contends that the identity of Respondent is unknown, and supports this contention by a copy of the WHOIS listing for the domain name at issue where the name of the registrant is protected by WHOIS privacy protection. Respondent cites a case for this proposition. In its amended Complaint, Complainant submits another copy of a WHOIS listing for the domain name at issue that identifies Respondent. Complainant contends that Respondent is not commonly known by the domain name at issue.

Complainant argues that Respondent has registered and used the domain name at issue in bad faith.

In support of this argument, Complainant cites various cases for the proposition that providing links to third party web sites makes it clear that a respondent obtained and used a domain name for the bad faith purpose of intentionally attempting to attract users to its Web site by creating a likelihood of confusion with the complainant’s trademark.

Complainant also contends that, upon information and belief, Respondent receives click-through fees for diverting Internet users to third party Web sites. Complainant cites a case for the proposition that such click-through fees can be inferred from third party links.

Complainant also contends that the similarity between the domain name at issue and the Trademarks, and the lack of any legitimate interest, establish the intentional trading off on the part of the Respondent of the Trademarks in bad faith.

B. Respondent

Respondent argues that the Complaint is misconceived and not maintainable and should be dismissed.

Respondent reserves the right to go to court as provided in ¶ 4(k) of the Rules, for independent resolution of the dispute.

Respondent argues that the case suffers from gross procedural anomalies and should be dismissed on that ground alone.

Respondent reserves the right to go to court as provided in ¶ 20 of the Rules, for deliberate wrongdoing by the provider.

Respondent contends that it has not received any notification of commencement of the case from the provider.

Respondent contends that on November 14, 2007, it approached the registrar of the domain name at issue to unlock the domain name, as the case had not yet commenced. According to Respondent, the registrar informed that the case has commenced and the domain name could not be unlocked and eventually informed the Respondent to directly contact the provider.

Respondent contends that it sent an e-mail to the provider inquiring about the case. According to the Respondent, it received a reply from the National Arbitration Forum on November 15, 2007, informing the Respondent that the Response deadline was November 19, 2007.

Respondent argues that since the case and notice of commencement has been served on it only on November 15, 2007, it should be given the mandatory time of 20 days to respond and that it right to be heard and to file a proper reply has been violated by the provider.

Respondent argues that the Complaint should be dismissed because proper procedure has not been followed.

Respondent denies each and every allegation, submission and contentions in the Complaint and puts the Complainant to the strict proof thereof.

Respondent contends that it purchased the domain name at issue for a client a few years ago. According to Respondent, the client did not pay for the domain name so that the Respondent owns the domain name and maintains the domain name as it feels that the client might otherwise register the domain name.

Respondent contends that it is not aware that the Complainant has rights in the mark GRAINGER.

Respondent denies that the domain name at issue is confusingly similar to the mark GRAINGER. In support of this argument, Respondent contends that the domain name at issue is not nearly identical to the Trademarks. Respondent contends that Complainant does not own the domain <www.granger.com> or the mark GRANGER.COM which can be said to be close to the domain name at issue. Based on this contention, Respondent argues that Complainant cannot claim that the Trademarks are violated by the domain name at issue or that there is a likelihood of Internet users being confused.

Respondent argues that it has not engaged in typosquatting.

Respondent contends that it registered the domain name at issue for a client and that the client should be using the domain name. Respondent contends that there are four letters difference between the Trademarks and the domain name at issue, which is a major difference for any knowledgeable person using the Internet to make a mistake.

Respondent contends it used the Private WHOIS service to prevent Spam and other marketing which is done by data miners.

Respondent argues that it has not committed any act of bad faith. In support of this argument, Respondent contends that there is no Web site using the domain name at issue and that the domain name has not been used to attract the customers of Complainant to divert those customers to Complainant’s competitors.

Respondent again argues that Complainant is not entitled to the disputed domain. According to Respondent, if Complainant were so entitled, it would first have proceeded against the owner of the domain <granger.com> and later against Respondent.

Respondent argues that it has proved its rights and legitimate interest in the domain name at issue, and proved that it paid a valuable consideration for the domain name.

Respondent contends that its Web site does not offer goods and services of the competitors of Complainant so that there is no evidence of bad faith.

FINDINGS

The procedural service ground raised by Respondent requires discussion and decision. The Panel has reviewed documents provided by the National Arbitration Forum regarding the acts taken by the National Arbitration Forum and the Complainant to commence this proceeding, and is satisfied that the service requirements of ¶ 2(a) of the Rules and ¶ 3(b)(xii) and 4(e)(1) of the Supplemental Rules have been followed. Respondent’s request to dismiss the Complaint on this ground is denied.

As noted in the procedural history, Respondent’s Response was not timely. Therefore the Panel has sole discretion as to the amount of weight given to the Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist). Given that the Response was only three days late and was detailed in its arguments and contentions, the Panel exercises its discretion and admits the Response in its entirety. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).

There being no other alleged procedural errors in this case, the Respondent’s request to dismiss the Complaint on gross procedural anomalies is denied.

The Panel acknowledges the Respondent’s reservation of rights under ¶ 4(k) of the Policy and ¶ 20 of the Rules, and notes that such reservation has no bearing on the issues or decision in this case.

The certification required by ¶ 3(b)(xiv) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a complainant, and the certification required by ¶ 5(b)(viii) of the Rules is the minimum to demonstrate the admissibility of the factual contentions made by a respondent. Without certification, a Panel may choose not to consider any factual statements, even in the case of pro se parties.

The Panel gives weight only to those admissible factual contentions that are verified by the documents attached to the submissions, or by affidavits or declarations, or that are admitted by the other party, or of which the Panel can take administrative notice, in accordance with the Panel’s powers under Paragraph 10(d) of the Rules.

In this case, Complainant has provided the required ¶ 3(b)(xiv) certification, and additional documents and declarations. The Panel finds that all of the factual contentions made by Complainant are admissible and will be given weight as appropriate.

Respondent has provided the required ¶ 5(c)(vii) certification, but no other documents or declarations. The Panel finds that all of the factual contentions made by Respondent are admissible, and will be given weight as appropriate.

DISCUSSION

¶ 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.”

¶ 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the 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.

Identical and/or Confusingly Similar

The Panel finds that Complainant has established rights in the Trademarks, through proof of its ownership of numerous trademark registrations, including U.S. Trademark Registration No. 1,559,199 that protects the mark GRAINGER for “catalog services …” and No. 2,194,993 that protects the mark GRAINGER.COM for “on-line catalog services…” and India Trademark Registration No. 334,538 that protects the mark GRAINGER for “printed matter…”

Respondent’s claimed ignorance of the Trademarks is no defense, given the existence of these trademark registrations. Most of the registrations predate Respondent’s registration of the domain name at issue on December 16, 2005.

The Panel finds that the domain name at issue incorporates Complainant’s mark GRAINGER.COM, simply adding “www” at the beginning and deleting the “i” from the middle of the mark. The Panel concludes that the domain name is confusingly similar to Complainant’s GRAINGER.COM mark under Policy ¶ 4(a)(i), as these slight edits fail to distinguish the disputed domain name from Complainant’s mark. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent 's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the complainant’s STATE FARM mark).

The Panel also finds that the domain name at issue incorporates Complainant’s mark GRAINGER, being distinguished also by the addition of the generic and top-level domain “.com”. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

The Panel finds that the domain name at issue takes advantage of a common typing error, by omitting the period that normally comes between the “www” and the rest of a domain name, a practice commonly known as “typosquatting.” See Marriott Int’l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding <mariottt.com> confusingly similar to MARIOTT.COM; see also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding <wwwbankofamerica.com> confusingly similar to BANK OF AMERICA, as it only eliminated the period after the “www”, taking advantage of a common typing error); see also ESPN, Inc. v. XC2, D2005-0444 (WIPO June 28, 2005) (finding that adding a second “n” to the domain name <espnnews.com> constituted typosquatting which by definition is confusingly similar to the mark ESPN).

Respondent’s denial of typosquatting is without factual or legal support.

One of Respondent’s defenses is the contention that there are four letters difference between the Trademarks and the domain name at issue, which is a major difference for any knowledgeable person using the Internet to make a mistake. The Panel must consider, however, not only the number of letters but also the identity of the letters. Choice of “www,” the well-known acronym for “World Wide Web,” as three of the four letters makes it almost certain that confusion will result.

Another of Respondent’s defenses is the contention that Complainant does not own the domain name <www.granger.com> or the mark GRANGER.COM. Respondent does not provide any factual support for this contention.[i]

A final defense of Respondent is that it registered the domain name at issue for a client. That contention, even if supported, is irrelevant to the issue of confusing similarity.

The Panel thus finds that the domain name at issue is confusingly similar to the Trademarks. Complainant has met its burden of proof under ¶ 4(a)(i) of the Policy.

Rights or Legitimate Interests

Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

¶ 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of ¶ 4(a)(ii) of the Policy:

(i) before any notice of the dispute, the Respondent’s use 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 and services; or

(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the Respondent is making a legitimate non‑commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent does not argue or contend, and Complainant has established, that Respondent is not commonly known by the domain name at issue. The Panel thus finds that Respondent has not established the circumstances of Policy ¶ 4(c)(ii).

Complainant contends that Respondent uses the disputed domain name to generate pay-per-click revenue to third party advertisers, from each diverted Internet user who clicks on one of the hyperlinks on the Web site using the domain name at issue to various third-party websites. Although the Respondent includes a general denial of all of Complainant’s contentions, it does not specifically deny this contention of Complainant or provide any reason why its domain name is used at a Web site that includes hyperlinks.

The Panel finds Respondent’s activity demonstrates neither a Policy ¶ 4(c)(i) bona fide offering of services or goods nor a Policy ¶ 4(c)(iii) noncommercial or fair use. See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites 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) because the registrant presumably receives compensation for each misdirected Internet user)); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

The Panel’s finding of typosquatting requires a finding that the nature of the domain name in dispute itself indicates that Respondent has no rights or legitimate interests in the domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).

The Panel thus finds that Respondent has not demonstrated any rights or legitimate interest in the domain name at issue. Complainant has met its burden of proof under ¶ 4(a)(ii) of the Policy.

Registration and Use in Bad Faith

The circumstances of ¶ 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under ¶ 4(a)(iii) of the Policy can be established.

¶ 4(b) of the Policy reads:

[T] he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Proof of ¶ 4(a)(iii) generally requires more than assertions of bad faith. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

Respondent is capitalizing on the confusion caused by the disputed domain name’s similarity to the Trademarks by diverting Internet users to third-party websites for the purpose of generating click-through revenue. Further, Internet users seeking out Complainant’s services or goods are likely to be confused as to Complainant’s association with the disputed domain name.

The Panel finds this behavior indicates that Respondent registered and is using the disputed domain name in bad faith as contemplated by Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

Additionally, the Panel’s finding of typosquatting requires a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

Respondent’s contentions are unpersuasive. Respondent first contends that there is no Web site using the domain name at issue, but then admits that there is a Web site that does not offer goods and services of competitors of Complainant. An examination of Respondent’s Web site shows that the services being offered through third party hyperlinks come within the description of services and goods in Complainant’s trademark registrations (including catalog services and printed matter).

Respondent’s payment of valuable consideration for the domain name at issue is irrelevant to the issue of bad faith.

Finally, Respondent’s contention that a third party owns the granger domain is unproven and not material to the issue of bad faith in the absence of evidence that GRANGER or GRANGER.COM are trademarks of third parties.[ii]

The Panel finds that Complainant has met its burden of proof under ¶ 4(a)(iii) of the Policy.

DECISION

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

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

Bruce E. O’Connor Panelist
Dated: December 12, 2007

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