The Complainant is The Lincoln Electric Company, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Whois Privacy Protection Service by VALUE-DOMAIN, Japan / Daisuke Nakajima, Meril. Inc, Japan. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed in English an amended Complaint on October 15, 2019. On October 11, 2019, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding. On October 15, 2019, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with the amended 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 the Respondent, in English and Japanese, of the Complaint, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2019. The Center appointed Douglas Clark as the sole panelist in this matter on November 28, 2019. 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 The Complainant, The Lincoln Electric Company, is an international company involved in the design, development and manufacture of arc welding products, robotic arc welding systems, plasma and oxy-fuel cutting equipment and has one of the leading global positions in the brazing and soldering alloys market The Complainant is the owner of trademark “Lincoln Electric”, which was first registered in the United States on May 16, 2000 in Class 9 (registration no. 2350082) as well as in Japan on January 11, 2002 (registration no. 4535287). The Complainant has also registered over 700 domain names which incorporate “Lincoln Electric”. The Respondent appears to be an individual of Tokyo, Japan. The disputed domain name Identical or confusingly similar The Complainant submits that the disputed domain name contains its registered trademark LINCOLN ELECTRIC in full to which the generic word “supply” has been added. It is, accordingly, confusingly similar to the Complainant’s trademark. No rights or legitimate interests The Complainant submits that the Respondent is not holder of the trademark LINCOLN ELECTRIC, is not commonly known by the disputed domain name and has no rights or legitimate interests in the trademark LINCOLN ELECTRIC. The Complainant also submits that the Complainant has not licensed or otherwise granted permission to the Respondent to make use of its LINCOLN ELECTRIC trademark or the disputed domain name. The Complainant also submits that the posts on the website under the disputed domain name give no suggestion of any rights or legitimate interests in the disputed domain name. Registered and being used in bad faith The Complainant submits that since its trademark is well known in the Respondent was or should have been aware of the trademark LINCOLN ELECTRIC as well as the Complainant’s domain names prior to registering the disputed domain name and this constitutes bad faith. Furthermore, the Complainant maintains that there is no plausible reason the Respondent has chosen the disputed domain name other than to in some way ride off the reputation of the Respondent. Reliance is also made on one case where the Respondent has lost a domain name case, the fact that cease and desist letters were ignored and that the Respondent used a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the proceeding The language of the Registration Agreement is Japanese. However, paragraph 11(a) of the Rules provides that: “unless otherwise agreed by the parties, or specified in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Complainant requested the language of the proceeding be in English on the grounds that the Complainant is not familiar with the Japanese language therefore the Complainant is not in a position to conduct these proceedings in Japanese without facing significant additional expense and delay. The Complainant further submits that the Respondent has registered the disputed domain name in standard Latin characters and the dominant portion of the disputed domain name is in English. The Respondent has not responded to the proceeding nor to the request for the language of the proceeding to be in English. The final determination of the language of the proceeding lies with this Panel. In Zappos.com, Inc. V. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, this panel decided that the Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.” Based on the fact that the Respondent has not responded to the Center’s language communications and for the reasons included above, the Panel determines to accept the Complaint in English and render its decision in English. 6.2 Substantive Issues A. Identical or Confusingly Similar The disputed domain name It incorporates the Complainant’s registered trademark LINCOLN ELECTRIC in its entirety together with the word “supply”. The generic Top-Level Domain (“gTLD”) “.com” should be disregarded under the first element confusing similarity test. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.) The disputed domain name is therefore confusingly similar to LINCOLN ELECTRIC. The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview 3.0 provides: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. In addition, the Panel notes the nature of the disputed domain name, which carries a risk of implied affiliation with the Complainant. (Section 2.5.1 of the WIPO Overview 3.0.) The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith The Panel finds that the disputed domain name The Panel is satisfied that that the Respondent must have known of the Complainant’s trademark and websites when the Respondent registered the disputed domain name. This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” While the disputed domain name resolves to an active website which does not appear to be used to generate immediate revenue, the use of the disputed domain name including the Complainant’s trade mark is clearly designed to attract users, which the Panel finds to be bad faith. The Panel notes that currently the disputed domain name does not resolve to an active website. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. See, WIPO Overview 3.0, section 3.3, Telstra Corporative Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003. The third element of paragraph 4(a) of the Policy is therefore satisfied. 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 Douglas Clark
Sole Panelist
Date: December 26, 2019
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