WIPO Domain Name Decision: D2009-1017 (function(w,d,s,l,i){w[l]=w[l]||[];w[l].push({'gtm.start':new Date.getTime,event:'gtm.js'});var f=d.getElementsByTagName(s)[0],j=d.createElement(s),dl=l!='dataLayer'?'&l='+l:'';j.async=true;j.src=''+i+dl;f.parentNode.insertBefore(j,f);})(window,document,'script','dataLayer','GTM-P7RLS2'); WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge Case No. D2009-1017 1. The PartiesThe Complainant is Graybar Services Inc. of Clayton, Missouri, United States of America, represented by Fredrikson & Byron, United States.The Respondent is Graybar Elec, Grayberinc Lawrenge of Sango Otta, Ogun, Nigeria. 2. The Domain Name and Registrar The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2009. On July 30, 2009, August 3, 2009, August 5, 2009 and August 7, 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 disputed domain name. On August 13, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 4, 2009.The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on September 18, 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 BackgroundThe Complainant is a large international company that procures, warehouses and distributes a wide range of electrical, communications and data products and has been doing so for some 140 years.The Complainant is the registered owner of a portfolio of United States trade marks for GRAYBAR including US Trade Mark No. 2,940,043 registered with the United States Patent and Trademark Office on April 12, 2005 for the mark GRAYBAR and also a wide range of trademarks for GRAYBAR registered in many other countries (hereinafter collectively referred to as “the GRAYBAR trademark”).The Complainant has registered and uses in its business a series of domain names incorporating its name, including .The Respondent registered the disputed domain name on May 6, 2009. 5. Parties' Contentions A. ComplainantThe Complainant alleges that the domain name should no longer be registered with the Respondent, but that it should be transferred to the Complainant.It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant's registered trademarks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.In support of its case on the first of these three elements, the Complainant relies on the registered GRAYBAR trademark to which reference has already been made. It then says that the domain name is confusingly similar to the GRAYBAR mark as the spelling of the word in the domain name is the same as the spelling of the same word in the trademark with the single alteration of the second “a” of GRAYBAR to an “e” and the addition of “inc” which is universally understood to stand for “incorporated”, as in a company.The Complainant then contends, to establish the second element, that the Respondent has no rights or interests in the domain name because the facts show an obvious intention by the Respondent to benefit from the reputation of the well-known GRAYBAR mark in an illegitimate manner, the domain name is virtually the same as the Complainant's well known mark, its name and the name of its parent company, the Respondent has not been authorized to use the mark in a domain name or anywhere else and, above all, the Respondent has been using the domain name to perpetrate a fraud. The essence of the fraud is that the Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant. These false emails are then used to order goods from the Complainant's suppliers using the documents created for the purported transactions to attempt to have the Complainant pay for the goods.The Complainant then contends, to establish the third element, that the domain name has been registered and used in bad faith, because the facts show that the Respondent registered the domain name primarily to interfere with the Complainant's business and that the Respondent by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website 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 the Respondent's website or location or of a product or service on the site or location. That is so because the Respondent has been using the domain name to perpetrate a fraud by pretending to be the Complainant and ordering goods in its name and on its account. It is also submitted by the Complainant that the whole of the conduct of the Respondent constitutes bad faith both with respect to the registration and the use of the domain name. B. RespondentThe Respondent did not reply to the Complainant's contentions. 6. Discussion and FindingsParagraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have held many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the panel.The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and(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. It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly SimilarThe Panel accepts the evidence submitted by the Complainant that it owns the registered GRAYBAR trademarks to which reference has been made and therefore has rights in those marks.The Panel also finds that the disputed domain name is confusingly similar to the GRAYBAR trademark. The spelling of the domain name is virtually the same as that of the mark; all that has been done to create the domain name is to take the trademark, change the second letter “a” into an “e” and add the generic expression “inc” which is universally known to stand for “incorporated”, as in the incorporation of a company. It has long been held that a minor spelling alteration and the addition of a few letters, especially where those letters form a generic expression indicating a company or an activity in which the trademark owner operates does not detract from confusing similarity that otherwise exists, which it does in the present case. Indeed, the close proximity to the spelling of the correct name of the Complainant and the addition of the expression indicating that the domain name is referring to the Complainant as an incorporated body, does not diminish the confusing similarity but increases it.It has also long been held that suffixes such as the gTLD suffix “.com” cannot negate confusing similarity where it otherwise exists, as it does in the present case.The Panel finds that the Complainant has therefore made out the first of the three elements that it must establish. B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:(i) before any notice to you [Respondent] of the dispute, your 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; or(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or(iii) you [Respondent] are making a legitimate noncommercial 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.Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the Complainant will have failed to discharge its onus and the Complaint will fail.The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until September 3, 2009 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP”.The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.The prima facie case is based on the facts that:(i) the GRAYBAR trademark is well-known and well established;(ii) the Respondent chose this prominent name for its domain name and made only a minor spelling alteration and addition which is prima facie an attempt to deceive and mislead people;(iii) the domain name is confusingly similar to the Complainant's GRAYBAR trademark and the registrant purports to be an entity with a name virtually identical to that of the Complainant and with a further name virtually identical to the name of the Complainant's Senior Vice President of Operations;(iv) the Respondent has not been authorized by the Complainant to use the GRAYBAR name or mark as the basis for a domain name or for any other purpose; and(v) it is very difficult to find a legitimate reason for using an altered version of the GRAYBAR trademark in the disputed domain name as the Respondent has done; and(vi) it is apparent from the evidence that the Respondent has been using the domain name to perpetrate a fraud. The essence of the fraud is that the Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives. These false emails have then been used to order goods from the Complainant's suppliers using the documents created for the purported transactions to attempt to have the Complainant pay for the goods so that they are received by the Respondent free of charge.The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name. C. Registered and Used in Bad FaithThe Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.The four specified circumstances are:(i) circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.The Complainant relies on paragraphs 4(b)(iii) and (iv) of the Policy.The Panel finds that the evidence submitted by the Complainant makes out a strong case that the Respondent both registered and is using the domain name in bad faith. In particular, the facts bring the case squarely within the provisions of paragraphs 4(b)(iii) and (iv) of the Policy. That is so for the following reasons.The evidence shows that the Respondent has registered as a domain name the Complainant's well-known GRAYBAR trademark with only a minor alteration and addition. This raises the preliminary assumption that the domain name has been registered for some illegitimate purpose. Of course it was always open to the Respondent to show that this was not so, but it has declined to make any attempt to give a plausible explanation for registering a domain name incorporating such a prominent trademark and making the slight alteration and addition that raises the further assumption that this was done to deceive and mislead people.Moreover, the evidence shows that having registered the domain name the Respondent has been using it to perpetrate a fraud. The essence of the fraud is that the Respondent has used the domain name to pretend that it is the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant and one of its senior executives. These false emails were then used to order goods from the Complainant's suppliers using the documents created for the purported transactions to attempt to have the Complainant pay for the goods and with the intention that the goods were received by the Respondent free of charge.Such conduct brings the case within the provisions of paragraph 4(b)(iii) of the Policy, for it shows the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, namely the Complainant. That is so because such a fraudulent transaction inevitably creates a dispute as to who is liable for the price of the goods, give rise to bad relations between the Complainant and its suppliers and incurs a considerable waste of time and money in unraveling the fraud and its consequences, all of which are disruptive of the business of the Complainant.The Respondent's conduct also brings the case within the provisions of paragraph 4(b) (iv) of the Policy, for the whole of the fraudulent transaction was conducted on the Internet, showing that by using the domain name as the origin of the emails, the Respondent intentionally attempted to attract, for commercial gain, Internet users being the Complainant's suppliers to the Respondent's on-line location, by creating a likelihood of confusion between the Complainant's mark and the source or affiliation of the fraudulent emails.In any event the whole of the modus operandi of the Respondent was fraudulent, showing that the registration and use of the domain name were in bad faith.The Complainant has thus shown the third of the three elements that it must establish. 7. DecisionFor 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. The Honourable Neil Anthony Brown QC Sole PanelistDate: October 2, 2009
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