WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Graybar Services Inc. v. Lawrence Giglio, Grssbar Electric Inc. Case No. D2009-0993 1. The Parties
The Complainant is Graybar Services Inc., of Illinois, United States of America; represented by Fredrikson & Byron, United States.
The Respondent is Lawrence Giglio, Grssbar Electric Inc., of Lagos, Nigeria. 2. The Domain Name and Registrar
The disputed domain name (hereinafter “the Domain Name”) is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2009. On July 24, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the Domain Name. On July 27, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 31, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 25, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on
September 4, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is distributor of electrical, communications and data products, their related components, equipment and materials. It has more than 250 distribution centres throughout the United States, Canada and Puerto Rico.
Complainant is the owner of the United States trademark registration for the word GRAYBAR (the “Trademark”) for wholesale distributorship services in the fields of electrical, communication and data products, and is also the owner of trademark registrations in many other countries worldwide. Details are provided.
The Domain Name was created on June 10, 2009. 5. Parties' Contentions A. Complainant
Complainant contends that it owns a family of domain name registrations incorporating the Trademark, including , and that it has been using this Trademark in connection with its distributorship services in the fields of electrical, communication and data products for over 80 years.
Complainant asserts that Respondent registered the Domain Name 14 years after its own domain name was registered and over 80 years from when it began using the Trademark. Complainant also asserts that the Domain Name incorporates its Trademark in its entirety, with the addition of the generic term “inc”, and that this is sufficient to cause confusion.
Complainant contends that there is no active website associated with the Domain Name. Instead, it says, Respondent has registered the Domain Name and used it as a tool for its nefarious activities including selecting the Domain Name to create email addresses and masquerade as high ranking officers of Complainant and more specifically requesting price quotes from certain of Complainant's suppliers. Accordingly, it is submitted that Respondent is not using the Domain Name in connection with a bona fide offering of goods or services.
Complainant contends that Respondent has created false email addresses pretending to be personnel of the Complainant and requesting quotes from Complainant's suppliers for various processors and inkjet products. Complainant also understands that one of its suppliers, Dell, delivered product ordered from the false email address to an address unrelated to Complainant whilst directing the invoice for said products to Complainant.
Complainant also contends that similar activities are being conducted in connection with the domain name . The register at WhoIs records this domain name as having a Nigerian address and identical phone number and email address to that recorded for the Domain Name. Complainant submits that these similarities are not coincidental and contends that for the above reasons Respondent has no rights or legitimate interests in the Domain Name.
Complainant submits that Respondent has registered the Domain Name in bad faith with a view to disrupting its business and for an illegal purpose; namely to create email accounts designed to create a likelihood of confusion with the Trademark and deceive Internet users such as Complainant's suppliers and vendors into believing emails sent from such accounts were legitimate emails from Complainant.
Complainant contends that Respondent's actions were intentional and for commercial gain. B. Respondent
The Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant is the owner of the GRAYBAR Trademark for wholesale distributorship services in the fields of electrical, communication and data products. It has also made extensive use of the Trademark. Complainant is thus entitled to rely upon its rights and interests by virtue of both registration and use of the Trademarks.
The Domain Name comprises an obvious abbreviation or modification of “Graybar Services Inc”. On this basis the Trademark is clearly identifiable in and with the Domain Name. As a result, the Panel finds that the Domain Name is confusingly similar to the Trademark.
It is therefore found that Complainant has rights in the Trademark, that this is found in the Domain Name, and that the requirements of Paragraph 4(a)(i) of the Policy are met. B. Rights or Legitimate Interests
Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use and register its trademarks.
The registration and use of the Trademark clearly preceded the registration of the Domain Name. The Domain Name makes a clear reference to the Trademark.
There is no evidence of 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 or services. Instead, it is asserted by Complainant that Respondent has used the Domain Name for improper purposes, namely to create email addresses and masquerade as high ranking officers of Complainant and to request price quotes from certain of Complainant's suppliers. These are serious allegations which presumably would have been disputed in some way of inaccurate or untrue. However, these allegations are not disputed.
Accordingly, these allegations and assertions, accompanied by a failure to deny is sufficient for the Panel to draw an inference that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant thus succeeds in meeting the requirements of Paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that Respondent has registered and uses the domain name in bad faith.
Given the lack of evidence to the contrary, the Panel infers that Respondent knew or must have known of Complainant's Trademark at the time it registered the Domain Name.
Complainant's submission that Respondent has registered the Domain Name for an illegal purpose; namely to create email accounts designed to create a likelihood of confusion with the Trademark and deceive Internet users such as Complainant's suppliers and vendors into believing emails sent from such accounts were legitimate emails from Complainant point strongly towards bad faith conduct.
Again absent any Response from Respondent the Panel concludes that Respondent both registered and used the Domain Name in bad faith in accordance with Paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Clive L. Elliott
Sole Panelist
Dated: September 15, 2009
Full & Egal Universal Law Academy