The Lincoln Electric Company v. Domain admin / Conquistador Sat
Claim Number: FA1505001621666
Complainant is The Lincoln Electric Company (“Complainant”), represented by Thomas M. Williams of Ulmer & Berne, LLP, Illinois, USA. Respondent is Domain admin / Conquistador Sat (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwlincolnelectric.com> ('the Domain Name') , registered with Fabulous.com 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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2015; the Forum received payment on May 28, 2015.
On June 1, 2015, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <wwwlincolnelectric.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com 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 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2015 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@wwwlincolnelectric.com. Also on June 5, 2015, 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 July 1, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
The Complainant’s Submissions can be summarized as follows:
The Complainant is an American multinational manufacturer of welding, cutting and joining products, founded in 1895, having distribution in 160 countries and manufacturing in North America, Europe, the Middle East, Asia and Latin America. It has many registered trade marks worldwide, including the USA, where first use is claimed back to 1915. It has websites, including at lincolnelectric.com and lincoln-electric.com.
The Respondent appears to have registered the Domain Name in 2004. It registered under a privacy service, but its identity was revealed to be Conquistador Sat, a serial cyber squatter.
The Domain Name is confusingly similar to the Complainant’s LINCOLN ELECTRIC marks in that it features those marks in their entirety while adding the prefix www, eliminating the space between the words Lincoln and electric and adding the generic top level domain .com which is not a sufficient way to differentiate a disputed domain name from a given mark.
Respondent has no rights or legitimate interests in the Domain Name. it is not associated with the Complainant in any way and the Complainant has not authorised the Respondent to register the Domain Name or use the Complainant’s marks. There is no basis in declaring the Respondent as commonly known by the Domain Name.
The Domain Name resolves to a parked web site containing click through links to various third parties businesses unrelated to the Complainant. , however the Domain Name gives the impression that users will find information related to the Complainant at the Domain Name. The use of the Domain Name is typo squatting, a form of cyber squatting that targets Internet users who incorrectly type a web address into a browser, such as consumers who inadvertently omit the separating period when looking for www.lincolnelectric.com and is bad faith under the Policy in itself.
This is the eighth instance of the Respondent's cybersquatting as evidenced by prior decisions under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is an American manufacturer of welding, cutting and joining products, with registered trade marks, inter alia, in the USA where first use is claimed back to 1915. It has websites, including at lincolnelectric.com and lincoln-electric.com.
The Respondent appears to have registered the Domain Name in 2004. The Domain Name resolves to a parked web site containing click through links to various third parties businesses unrelated to the Complainant.
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(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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's LINCOLN ELECTRIC mark, the generic term 'www' indicating world wide web and the gTLD .com.
See Bank of Am. Corp v InterMos, FA 95092 (Nat. Arb. Forum Aug 1, 2000)(finding that the respondent's domain name wwwbankofamerica.com was confusingly similar to the Complainant’s registered trade mark BANK OF AMERICA because it takes advantage of a typing error, eliminating the period between the www and the domain name)
The gTLD .com does not serve to distinguish the Domain Name from the LINCOLN ELECTRIC mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
The Complainant contends that on the evidence Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The Complainant contends that the site is set up for commercial benefit using the latter's intellectual property rights to make a profit.
Prior panels have found that use of a confusingly similar domain name to re-route Internet users to a web page displaying unrelated third party links cannot consist of a bona fide offering or a legitimate non-commercial or fair use. See Constellation Wines US Inc. v Tex Int'l Prop Assocs, FA 948436 (Nat. Arb. Forum May 8, 2007((finding that the respondent had no right or legitimate interests under Policy 4 (c)(i) or 4(C)(iii)by using the disputed domain name to operate a web site featuring links to goods and services unrelated to the Complainant.
Additionally the Domain Name appears to be a typo squatted version of the Complainant's domain name chosen in the hope that a customer might mistakenly reach Respondent's web site by typing 'www' rather than 'www.' See Amazon.com, Inc. v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005)(respondent lacks rights and legitimate interests in the www-amazon.com domain name because the addition of 'www-' constitutes typosquatting)
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent’s use of the site is commercial and he is using it to make profit from a web site displaying third party links in a confusing manner. As held above the Panel believes that the use is confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant offering goods and services under a very similar name to the Complainant which appears to be a domain name which is a typo squatted version of the Complainant’s domain name. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website attached to the Domain Name by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Allianz of Am. v Bond, FA680624 (Nat. Arb Forum June 2, 2006)(finding bad faith registrations and use under Policy 4 (b) (iv) where the respondent was diverting Internet users searching for the complainant to its own web site and likely profiting)
Finally, typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Nat. Arb. Forum June 23, 2003) ('registering a domain name which entirely incorporates a famous mark with the addition of the 'www' prefix evidences not only actual knowledge of a trade mark holder's rights in that mark but an intent to ensnare Internet users who forget to type the period between the 'www' and a second level domain name while attempting to reach Complainant's URL')
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwlincolnelectric.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<July 11, 2015>>
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page