Global Equipment Company, d/b/a Global Industrial v. Omar Lopez
Claim Number: FA2209002011439
Complainant is Global Equipment Company, d/b/a Global Industrial (“Complainant”), represented by Stephenie Yeung of Schnader Harrison Segal & Lewis, LLP, Pennsylvania. Respondent is Omar Lopez (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <u-industrialdirect.com>, registered with Tucows Domains Inc..
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to Forum electronically on September 9, 2022; Forum received payment on September 9, 2022.
On Sep 12, 2022, Tucows Domains Inc. confirmed by e-mail to Forum that the <u-industrialdirect.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 September 13, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2022 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@u-industrialdirect.com. Also on September 13, 2022, 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 October 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <u-industrialdirect.com> domain name is confusingly similar to Complainant’s GLOBAL INDUSTRIAL mark.
2. Respondent does not have any rights or legitimate interests in the <u-industrialdirect.com> domain name.
3. Respondent registered and uses the <u-industrialdirect.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant, Global Equipment Company, has operated an online shop for equipment since 1997. Complainant holds a registration for the GLOBAL INDUSTRIAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,958,047, registered January 7, 2020).
Respondent registered the <u-industrialdirect.com> domain name on April 17, 2022, and uses it to compete with 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(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 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”).
The Panel finds that Complainant has rights in the GLOBAL INDUSTRIAL mark through its registration with the USPTO. See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).”)
Complainant argues that Respondent’s <u-industrialdirect.com> domain name is confusingly similar to Complainant’s GLOBAL INDUSTRIAL mark because it incorporates the term “industrial” in the mark, and adds the letter u, a hyphen, and the generic term “direct.” Complainant contends that the disputed domain name creates the same commercial impression as Complainant’s mark, as both use the dominant term “industrial.” The Panel finds, however, that the term “industrial” is a generic term that, by itself, cannot be controlled by Complainant. The disputed domain name does not use both of the terms in Complainant’s mark, namely “global” and “industrial”; rather it uses “industrial” and adds another generic term “direct” to form the main part of the domain name. The addition of the “u” and the hyphen in the disputed domain name only further differentiates it from Complainant’s mark.
The Panel has no doubt that Respondent is using the disputed domain name to gain some of Complainant’s customers by appearing to be Complainant at the resolving website. Nonetheless, it is not doing that by using a domain name that is confusingly similar to Complainant’s mark. Respondent’s domain name uses generic terms, which happen to include one of the generic terms in Complainant’s mark. While Complainant may have other remedies, the UDRP cannot be used to transfer the disputed domain name to Respondent.
The Panel finds that Respondent’s <u-industrialdirect.com> domain name is NOT confusingly similar to Complainant’s GLOBAL INDUSTRIAL mark.
The Panel finds that Complainant has not fully satisfied Policy ¶ 4a(a)(i) and therefore declines to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <u-industrialdirect.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: October 11, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page