The Complainant is W.W. Grainger, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Daniel Thomas, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2020. On July 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2020, 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 July 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 9, 2020. 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 of the Complaint, and the proceedings commenced on July 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2020. The Center appointed Andrew J. Park as the sole panelist in this matter on August 12, 2020. 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, W.W. Grainger, Inc. is a North American broad line supplier of maintenance, repair and operating (MRO) products, and the 13th largest online retailer in North America. Grainger also has operations in Europe, Japan and Latin America. The Complainant is a publicly traded company on the New York and Chicago Stock Exchange under the symbol GWW and has been in business for over 85 years. The Complainant owns multiple trademark registrations for trademarks incorporating its famous GRAINGER trademark with the United States Patent and Trademark Office (“USPTO”), including: MARK REG. NO. ISSUED GRAINGER 1,559,199 July 11, 1989 GRAINGER 3,256,911 June 26, 2007 GRAINGER CONSULTING SERVICES 2,442,470 April 10, 2001 GRAINGER EXPRESS 2,419,839 January 9, 2001 GRAINGER FOR THE ONES WHO GET IT DONE 3,130,996 August 15, 2006 GRAINGER INDUSTRIAL SUPPLY 2,360,132 June 20, 2000 GRAINGER LIGHTING SERVICES 4,650,693 December 2, 2014 GRAINGER ONLINESAFETYMANAGER & Design 4,232,412 October 30, 2012 GRAINGER PARTS 2,433,255 March 6, 2001 GRAINGER TOOLS FOR TOMORROW 3,363,775 January 1, 2008 GRAINGER TRIPLEGUARD 2,596,087 July 16, 2002 GRAINGER WORKBENCH 4,635,697 November 11, 2014 GRAINGER.COM 2,194,993 October 13, 1998 The Complainant also has trademark registrations for its GRAINGER trademark in at least 80 other countries, for GRAINGER including in Panama, where the Respondent is purportedly located. In addition, the Complainant owns the domain name The disputed domain name On April 22, 2020, the Complainant sent a letter to the Respondent by email advising the Respondent of Complainant’s rights in its GRAINGER trademark and demanding the Respondent cease and desist from all use of the Complainant’s GRAINGER mark and immediately transfer the disputed domain name to the Complainant. The Respondent never responded to the Complainant’s letter. The Respondent did not submit any response to the Complaint. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name should be transferred to the Complainant because: 1) the disputed domain name 2) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant argues that the Respondent registered the disputed domain name without the Complainant’s authorization or consent. The Respondent is not commonly known by the disputed domain name, has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, has not been authorized, licensed, or otherwise permitted by the Complainant to register and/or use the disputed domain name. Moreover, the Complainant insists that the Respondent’s use of the disputed domain name does not constitute a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent used the disputed domain name for its website which contains advertisements for goods and services in direct competition with the Complainant, as well as links, such as “Granger Supply” and “Grainger Supply” which redirect Internet users to websites for Carol Technologies or Magnum Electronics, both of which are in direct competition with the Complainant in the same business industry. 3) the disputed domain name was registered and is being used in bad faith. First, the Complainant claims that the Respondent registered the disputed domain name long after the Complainant established its rights in its trademark with an intent to profit of those rights. The Respondent was clearly aware of the Complainant’s rights in its GRAINGER trademark when the Respondent acquired the disputed domain name because the disputed domain name is confusingly similar to the Complainant’s well-known GRAINGER mark and the website which the disputed domain name resolved to displays links that reference the Complainant, and the links divert Internet users to the websites of the Complainant’s competitors. Second, the Complainant claims that the Respondent is intentionally attempting to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Complainant insists that the Respondent not only registered the disputed domain name with the knowledge of the Complainant’s right in the GRAINGER mark but is also commercially using the disputed domain name in bad faith because the website which the disputed domain name resolved to contains links that divert Internet traffic intended for the Complainant to websites featuring advertisements for goods and services of companies in competition with the Complainant. Third, the Complainant argues that the disputed domain name has active MX records which indicate that the disputed domain name is being used for phishing or fraud purposes. The fact that the Respondent has established an “MX record” for the disputed domain name reflects that the Respondent could use the disputed domain name as a domain for email addresses handled by an email server, thus potentially presenting a risk that the disputed domain name will be used in facilitating phishing activities while pretending to be the Complainant. Finally, the Complainant pointed out that the Respondent initially used a privacy service to register the disputed domain name to shield its identity and to elude enforcement efforts by the legitimate trademark owner, all of which demonstrates the Respondent’s bad faith use and registration of the disputed domain name. The Respondent used the disputed domain name to disrupt the Complainant’s business, to redirect business to websites of the Complainant’s competitors, and to promote the products and services of the Complainant’s competitors. The Complainant further alleges that the Respondent ignored the Complainant’s requests to desist from such actions. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark. The Panel finds that the Complainant has established registered rights in the GRAINGER trademark, and that the disputed domain name is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademark in its entirety. The mere alteration of the letter “g” with the letter “q” does nothing to avoid a finding of confusing similarity to the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, the addition of the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. Here, the Panel finds that the Complainant has made out a prima facie case. The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use its trademarks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the disputed domain name or has been commonly known by the disputed domain name. Also, there is no evidence that the Respondent has an intention to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel’s view is that these facts may be taken as true in the circumstances of this case and in view of the use of the disputed domain name. Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith: (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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location. The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent violated the Policy, paragraph 4(b)(iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark. The Respondent registered the disputed domain name that is confusingly similar to the Complainant’s trademark, GRAINGER, with the knowledge of the Complainant’s famous business and its trademark. The Panel finds the Respondent intentionally registered the disputed domain name – which is confusingly similar to the Complainant’s GRAINGER trademark – in bad faith. First, the Complainant’s commencement of its business in 1927, its use of the domain name Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the likelihood of confusion between the disputed domain name and the Complainant’s trademarks when it registered the disputed domain name, and is using the disputed domain name to attract Internet users to the Respondent’s website for commercial gain. Furthermore, the Complainant has provided evidence that the Respondent has set up MX records for the disputed domain name. This entails the possibility that Respondent can use the disputed domain name to send fraudulent emails for phishing attempts or fraudulent activities. See also Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi,WIPO Case No. D2016-1980. Also, the Registrar shows that the Respondent had employed a privacy service and had provided false contact information when registering the disputed domain name, all in an effort to conceal its identity, which is an indication of its bad faith. See Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet,WIPO Case No. D2000-1196; Inkkas, LLC v. Katherine Garcia,WIPO Case No. D2017-1992. As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the 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 Andrew J. Park
Sole Panelist
Date: August 27, 2020
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