The Complainant is W.W. Grainger, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 27, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. 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 the Respondent of the Complaint, and the proceedings commenced on May 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021. The Center appointed Antony Gold as the sole panelist in this matter on June 28, 2021. 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 is a publicly traded company on the New York and Chicago Stock Exchanges. It has been in operation for over 85 years and sells a wide range of maintenance, repair and operating products. It has 681 branches, almost 24,000 employees worldwide and over USD 10 billion in annual sales. The Complainant claims that it is the thirteenth largest online retailer in North America. The Complainant’s principal trading style is GRAINGER and it owns many trade marks, both in the United States and in other countries, which comprise or include this word. These include, by way of example only, United States Trade Mark, registration number 1,559,199 for GRAINGER in class 9, registered on October 3, 1989. The Complainant also owns and operates the domain name The disputed domain name was registered on November 14. 2020. It resolves to a directory page containing pay-per-click (“PPC”) links to a variety of goods and services. As at April 15, 2021, these included “Live Tv Live Stream Free”, “Free Background Check Online” and “How to Watch Uefa”. The disputed domain name is also offered for sale on a third party domain name auction platform, with a minimum bid of USD 999. 5. Parties’ Contentions A. Complainant The Complainant says that the disputed domain name is virtually identical to its GRAINGER trade mark, the differences comprising solely the insertion of the letter “q” before the letter “a” in the Complainant’s mark and the addition of the generic Top-Level Domain (“gTLD”) “.com”. The letter “q” was undoubtedly chosen by the Respondent because it is positioned next to the letter “a” on a standard QWERTY keyboard, thereby increasing the likelihood of Internet users accidentally mistyping “q” when hitting the “a” key. Such an alteration to the Complainant’s mark does not negate its confusing character and comprises typosquatting. The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name was registered without the Complainant’s authorization or consent. The Respondent is not commonly known by the disputed domain name, nor are there any trade mark applications or registrations in the name of the Respondent anywhere in the world which incorporate the word GRAINGER. Furthermore, the Respondent has not used, or prepared to use, the disputed domain name in connection with a bona fide offering of goods and services, nor has it been licensed or otherwise permitted by the Complainant to register and/or use the disputed domain name. The Respondent is using the disputed domain name to redirect Internet traffic to a website offering PPC and/or affiliate advertising for commercial gain, which does not comprise a noncommercial or fair use of it. In addition, the Respondent’s offering for sale of the disputed domain name, whilst aware that the disputed domain name contains a typo of the Complainant’s famous trade mark, is an attempt by it to take advantage of the goodwill associated with the Complainant’s famous trade mark and does not create rights or a legitimate interests under the Policy; see BolognaFiere S.p.A. v. Currentbank-Promotools, SA. Inc/Isidro Sentis a/k/a Alex Bars,WIPO Case No. D2004-0830. Furthermore, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant established its rights in its GRAINGER trade mark and with knowledge by the Respondent of its mark. The Complainant’s many trade mark registrations for GRAINGER also include a registration in Panama, where the Respondent is supposedly based. The mere fact that the Respondent has registered a disputed domain name which is virtually identical to the Complainant’s mark is sufficient to infer bad faith and suggests opportunistic bad faith; see The Elizabeth Taylor Cosmetics Company v. NOLDC, Inc,WIPO Case No. D2006-0800. Additionally, the disputed domain name has active mail exchange (“MX”) records indicating that it is being used for email, which suggests possible use of the disputed domain name for phishing or fraud purposes; see The Depository Trust & Clearing Corporation v. Guillaume, Guillaume Kuffler,WIPO Case No. D2020-0663. The Respondent acquired the disputed domain name in order to redirect Internet traffic to a website offering PPC and/or affiliate advertising for commercial gain. Such conduct comprises bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy because the Respondent is using the disputed domain name in order to intentionally attract Internet users to its website for the purpose of commercial gain, thereby creating a likelihood of confusion regarding the source, sponsorship, affiliation or endorsement of its website. Moreover, the disputed domain name is listed for sale, with a minimum offer invited of USD 999, which is far in excess of the Respondent’s investment in it. The Respondent’s attempt to sell the disputed domain name, when it has knowledge of the Complainant’s trade mark, for a sum in excess of its investment comprises bad faith registration and use under paragraph 4(b)(i) of the Policy. The Respondent used a privacy shield to register the disputed domain name. Use of a privacy shield to elude enforcement efforts by the Complainant demonstrates the Respondent’s bad faith use and registration; see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696. Finally, the Respondent did not reply to the cease and desist letter sent on behalf of the Complainant, which is a further indication of bad faith registration and use. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and The Complainant has provided evidence of its trade and service mark registrations for GRAINGER, full details of one of these marks having been set out above, and has thereby established its rights in this mark. For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s GRAINGER mark, the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the entirety of the Complainant’s mark with no additional content, save only that the letter “q” has been inserted between the second and third letters of the Complainant’s mark. This small variation does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Notwithstanding the presence of the additional letter, the Complainant’s GRAINGER mark is clearly recognizable within the disputed domain name. The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. As explained at section 2.9 of the WIPO Overview 3.0, UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with, or capitalise upon, the reputation and goodwill of a complainant’s trade mark. The fact that the links which have featured on the Respondent’s webpage have no obvious connection with the Complainant is insufficient for the Respondent’s activities to be considered as comprising a bona fide offering of goods and services because the Respondent has been using, without the Complainant’s consent, the fame of its mark in order to attract Internet users to its webpage, and thereby derive an unfair commercial benefit from the Complainant’s mark. It is well-established under the Policy that registering a domain name and doing no more with it than to advertise that it is for sale, does not support a respondent’s legitimate interests under the Policy; see Ruby’s Diner, Inc. v. Joseph W. Popow,WIPO Case No. D2001-0868. The fact that the Respondent is also using the disputed domain name in order to resolve to webpage containing PPC links, in addition to offering it for sale on a third party website, does not in these circumstances give rise to rights or legitimate interests on the part of the Respondent in the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the Respondent is making a commercial use of the disputed domain name and its composition is such that it carries a significant risk of implied affiliation with the Complainant, which prevents its use from being considered fair. Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith In determining whether the Respondent was aware of the Complainant as at the date of its registration of the disputed domain name, it is appropriate to take into account the fact that the links on the directory page to which the disputed domain name resolves do not have any obvious connection with the Complainant and its product ranges. However, it is also material to have regard to the fact that the Complainant’s evidence establishes that it has longstanding and widespread repute in its GRAINGER trade and service marks. Moreover, the Complainant’s assertion that the Respondent was aware of the Complainant as at the date of its registration of the disputed domain name has not been challenged by the Respondent. Finally, there is no other plausible explanation for the Respondent’s registration of the disputed domain name other than an intention by the Respondent to take unfair advantage of the Complainant’s repute in its GRAINGER trade mark in order to attract Internet users to its website. As the UDRP panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trade mark registration amounts to bad faith”. Similarly, as explained at section 3.1.4 of the WIPO Overview 3.0: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Such a presumption applies on these facts and, as the Respondent has not attempted to rebut it, the Panel finds that the Respondent was aware of the Complainant’s mark as at the date of registration of the disputed domain name and that the disputed domain name was registered in bad faith. Whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, previous decisions under the Policy have found that such conduct can, in appropriate circumstances, constitute bad faith use. See, for example, Yahoo! Inc. v. Hildegard Gruener,WIPO Case No. D2016-2491, in which the UDRP panel explained that “the use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”. The facts point to the Respondent having registered the disputed domain names in circumstances similar to those outlined in Yahoo! Inc. v. Hildegard Gruener, supra. Even though the PPC links on the Respondent’s website pages do not relate to goods similar to those provided by the Complainant, the Respondent is attracting Internet users to its website, and deriving income from the PPC links on it, because of the confusing similarity between the disputed domain name and the Complainant’s GRAINGER mark. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of those websites. Paragraph 4(b)(i) of the Policy provides a further circumstance which evidences bad faith registration and use, namely (in summary) if a respondent has acquired a domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Whether the Respondent’s primary motive has been to earn income from its directory page or from a sale of the disputed domain name is unknown and so it is unclear whether the Respondent’s conduct falls precisely within the scope of paragraph 4(b)(i) of the Policy. However, the circumstances of bad faith registration and use set out at paragraph 4(b) of the Policy are expressed to be without limitation and the Respondent is clearly trying to profit from the confusing similarity between the disputed domain name and the Complainant’s GRAINGER mark; see also AT&T Corp v. rnetworld,WIPO Case No. D2006-0569. In these circumstances, the Panel finds the Respondent’s offering for sale of the disputed domain name, for a sum which is presumably in excess of the actual costs of registration, to comprise a further instance of bad faith registration and use on its part. For these reasons, the Panel therefore finds that the disputed domain name was both registered and is being used in bad faith. The Complainant’s additional submissions do not therefore require determination. 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, Antony Gold
(ii) the 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. A. Identical or Confusingly Similar
Sole Panelist
Date: July 12, 2021
Full & Egal Universal Law Academy