Complainant is W.W. Grainger, Inc. of Lake Forest Illinois, United States of America, represented by FairWinds Partners, LLC, United States of America.
Respondent is Kyle Younger of Steens, Mississippi, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 14, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Disputed Domain Name. On October 24, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 25, 2011.
The Center verified that the Complaint together with the amendment to 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 October 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 16, 2011.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 23, 2011. 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 states that it “is the leading broad-line supplier of safety, facilities maintenance, repair and operating supplies in North America”; that it has been a publicly traded company in the United States since 1967; and that it has won numerous awards, including being ranked at No. 3 in Fortune Magazine’s America's Most Admired Companies, Diversified Wholesalers in 2007 and being ranked No. 2 in 2008.
Complainant further states that it is the owner of, and has used since at least as early as 1927, the mark GRAINGER in connection with the production, promotion, sale and distribution of safety, facilities maintenance, repair and operating supplies. In support thereof, Complainant cited (and provided supporting documentation for) the following federal Trademark Registrations in the United States: Nos. 1,559,199; 1,747,557; 2,039,641; 2,128,519; 2,194,993; and 3,053,642. These trademarks are referred to collectively hereafter as the “GRAINGER Trademark.” Complainant further states that it “generates significant sales revenue as a result of the advertising and marketing it conducts on its website,” screenshots of which were included in the Complaint.
The Disputed Domain Name was created on March 11, 2005, and does not appear to be used in connection with an active website. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the GRAINGER Trademark because Respondent “initially attracts searchers by using a confusingly similar copy of Complainant’s Marks which only adds an additional word ‘safety’, thereby making internet users think that the domain will lead to one of the Complainant’s legitimate sites. This confusion is heightened by the fact that many of Complainant’s products are, in fact, safety related.”
- Respondent has no rights or legitimate interest in the Disputed Domain Name because, inter alia,
“[w]here a domain is identical or confusingly similar to a well known trademark yet does not resolve to any website, panels have not hesitated to hold that no legitimate interest exists on the part of a respondent…Respondent is not commonly known by the name …[s]earchers for Complainant’s goods and services branded with its Marks, who typed in the Disputed Domain would be confused and think they were attempting to visit a site of the Complainant’s until they discovered that this domain does not resolve to any web Content…Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant by using the Marks in association with a domain that does not resolve to any content.”
- Respondent registered and is using the Disputed Domain Name in bad faith. “Respondent intentionally used the Marks without consent from Complainant and was put on constructive notice of Complainant’s rights in the Marks through Complainant’s Federal Trademark Registrations, most of which predate the creation date of ”; and because Respondent’s “passive holding” of the domain name amounts to bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the GRAINGER Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the GRAINGER Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., “graingersafety”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The addition of certain words, as here (that is, “safety”), can “exacerbate…the confusing similarity between the [Complainant’s] trademark and the Domain Name and increase…the risk of confusion between the Domain Name and the [*] trademarks.” Costco Wholesale Corporation and Costco Wholesale Membership, Inc. v. Kenneth Terrill,WIPO Case No. D2010-2124 citing Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (citing Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”)).
Here, because the word “safety” is associated with the GRAINGER Trademark, this word increases the confusing similarity between the Disputed Domain Name and Complainant’s trademark. See, e.g., Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”); and Guccio Gucci S.p.A. v. Hainei Zhou,WIPO Case No. D2011-1017.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in the Disputed Domain Name because: “[w]here a domain is identical or confusingly similar to a well known trademark yet does not resolve to any website, panels have not hesitated to hold that no legitimate interest exists on the part of a respondent”; “Respondent is not commonly known by the name ”; “[s]earchers for Complainant’s goods and services branded with its Marks, who typed in the Disputed Domain would be confused and think they were attempting to visit a site of the Complainant’s until they discovered that this domain does not resolve to any web Content”; and “Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant by using the Marks in association with a domain that does not resolve to any content.”
Under the Policy,
“a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iii). However, Complainant does not explain how Respondent is a “competitor.” Nevertheless, the Panel agrees with Complainant that bad faith may arise even in a case of passive holding such as here. As a previous panel noted in the frequently cited case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, the following factors are applicable in assessing bad faith when passive holding exists: whether Complainant’s trademark has a strong reputation and is widely known; whether Respondent has provided evidence of any actual or contemplated good faith use by it of the Disputed Domain name; whether Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name; whether Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and “taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
While not all of the Telstra factors are applicable here, it appears that the GRAINGER Trademark enjoy a strong reputation and is well-known, based upon its long history and numerous registrations and Complainant’s prominence; Respondent has not provided evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; and it is at least difficult to conceive of any plausible actual or contemplated active use of the Disputed Domain Name by the Respondent that would not be illegitimate.
Accordingly, the Panel is satisfied that Complainant has proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: December 7, 2011
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