Complainant is W.W. Grainger, Inc. of Lake Forest, Illinois, United States of America, represented by Greenberg Traurig, LLP, United States of America.
Respondent is Name Redacted. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 21, 2015. On August 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 7, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 30, 2015.
The Center appointed Gary J. Nelson as the sole panelist in this matter on October 16, 2015. 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 the owner of numerous trademark registrations for GRAINGER in the United States and throughout the world. Specifically, Complainant owns at least the following trademark registrations:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
United States
2039641
GRAINGER
009
February 25, 1997
United States
1747557
GRAINGER
042
January 19, 1993
United States
1559199
GRAINGER
035; 042
October 3, 1989
United States
2128519
GRAINGER
035; 037
January 13, 1998
The disputed domain name appears to have been registered on November 13, 2014. There is no active website associated with the disputed domain name. 5. Parties' Contentions A. Complainant
Complainant is a publicly traded company on the New York and Chicago Stock Exchanges and has been in business for over 85 years. Complainant offers more than 1.4 million products, operates 681 branches, employs almost 24,000 people worldwide, and has more than USD 10 billion in annual sales.
Complainant is North America's leading broad line supplier of maintenance, repair and operating products and is the 13th largest online retailer in North America.
Complainant owns multiple trademark registrations for GRAINGER and asserts that GRAINGER is a famous trademark.
The disputed domain name is confusingly similar to Complainant's GRAINGER trademark.
Complainant claims that the registration of the disputed domain name appears to have been made without the knowledge or authorization of the Registrar-confirmed holder of the disputed domain name by a third party using his identity. The holder contacted Complainant stating that he does not own the disputed domain name nor the email address associated with its registration and that "he had been the victim of identity theft and credit card fraud".
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Respondent Identity
Given the unrebutted evidence of Respondent's attempted fraud via use of the disputed domain name (discussed infra), the Panel finds it reasonable that Respondent would have the means and motive to obscure its true identity. In these circumstances, the Panel finds compelling the Registrar-confirmed holder of the disputed domain name's claim of identity theft. On the balance of probabilities, the Panel does not believe that he is the true registrant of the disputed domain name, and as such has redacted his name in this Decision. Attached as Annex 1 to this Decision is an instruction to the Registrar regarding transfer of the disputed domain name that includes the name of the referenced individual, and the Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel directs the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Paragraph 15(a) of the Rules instructs the 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."
In view of Respondent's failure to submit a formal 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 shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the GRAINGER trademark and the disputed domain name is confusingly similar to Complainant's GRAINGER trademark.
Complainant owns numerous GRAINGER trademark registrations throughout the world.
Accordingly, Complainant has established rights in its GRAINGER trademark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this presumption).
The disputed domain name is confusingly similar to Complainant's GRAINGER trademark because the disputed domain name incorporates the entirety of Complainant's GRAINGER trademark and merely adds the generic term "inc" (i.e., an abbreviation for "corporation"), the letter "s" and the Top-Level ".com" domain suffix.
Neither the addition of purely descriptive terms to a well-known mark nor the addition of a generic Top-Level Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that "[n]either the addition of an ordinary descriptive word […] nor the suffix '.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy, paragraph 4(a)(i) is satisfied).
Moreover, the mere addition of the letter "s" and the Top-Level ".com"" domain suffix directly behind Complainant's GRAINGER trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). C. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that respondent's failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain name, or that it is commonly known by any name consisting of, or incorporating the terms "grainger," "incs," or any combination of these terms. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant's rights in its related trademarks precede respondent's registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain name predates the establishment of Complainant's rights in its GRAINGER trademark.
For the disputed domain name, Respondent is maintaining a passive and undeveloped website. In this case, Respondent's failure to develop an active website corresponding to the disputed domain name is evidence supporting the conclusion that Respondent has no rights or legitimate interests in the dispute domain name. See Pharmacia & Upjohn AB v. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interests in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
Further, Complainant has furnished unrebutted evidence that Respondent has attempted to fraudulently obtain expensive computer equipment through emails sent using the disputed domain name by impersonating Complainant's purchasing manager. Such use does not give rise to any rights or legitimate interests.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). D. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent likely chose the disputed domain name with full knowledge of Complainant's rights in the GRAINGER trademark. Supporting this conclusion is the fact Respondent appears to have systematically sent out fraudulent email solicitations in an effort to purchase computer hardware and other expensive items, all while attempting to have the purchase price associated with these purchases charged to Complainant's accounts. The Panel finds this activity to be conclusive evidence that Respondent registered and is using the disputed domain name in bad faith.
Respondent's awareness of the GRAINGER trademark may also be inferred because Complainant's GRAINGER trademark was registered with the United States Patent and Trademark Office prior to Respondent's registration of the disputed domain name and since the GRAINGER trademark is widely known. The relevant priority dates for all of Complainant's relevant trademark registrations precede the date upon which the disputed domain name was registered (i.e., November 13, 2014). See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant's trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 ("the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue").
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 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.
Gary J. Nelson
Sole Panelist
Date: October 22, 2015
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