The Complainant is W.W. Grainger, Inc., United States of America, represented by Greenberg Traurig, LLP, United States of America.
The Respondent is Privacy Protection, Privacy Protection / Domain Administrator, Nigeria.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2021. On November 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 10, 2021, 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 November 11, 2021 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 November 12, 2021.
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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2021.
The Center appointed Richard C. K. van Oerle as the sole panelist in this matter on December 20, 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 BackgroundThe Complainant is a publicly traded company which has been in business for over 85 years. With more than 1.4 million products, 681 branches, almost 24,000 employees worldwide and over USD 10 billion in annual sales, the Complainant claims that it is a leading broad line supplier of maintenance, repair and operating products and one of the largest online retailer in North America. The Complainant also has operations in Asia, Europe and Latin America. Its official website is “www.grainger.com”.
The Complainant owns multiple trademark registrations for its GRAINGER marks and variations thereof in the United States amongst which:
- U.S. Trademark Registration No. 1,559,199 for GRAINGER, registered on October 3, 1989;
- U.S. Trademark Registration No. 1,747,557 for GRAINGER, registered on January 19, 1993;
- U.S. Trademark Registration No. 2,039,641 for GRAINGER, registered on February 25, 1997;
- U.S. Trademark Registration No. 2,128,519 for GRAINGER, registered on January 13, 1998.
The Complainant also has trademark registrations for its GRAINGER marks in at least eighty countries.
The trademark registrations for Complainant’s trademarks will hereinafter be referred to in singular as ‘the Trademark’. The Complainant has used the Trademark since at least as early as 1928, nearly a century before the Respondent’s registration of the disputed domain name in September 2021.
The disputed domain name was registered on September 15, 2021, and resolves to active webpages containing pay-per-click (“PPC”) links.
5. Parties’ Contentions A. ComplainantThe Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered Trademark: the disputed domain name incorporates the Trademark in full, changing the mark only by adding the descriptive prefix “jobs” and “at” plus the generic top-level domain (“gTLD”) “.com” after the mark. The mere addition of generic terms and a gTLD to a Trademark fails to produce a domain name distinct from the Complainant’s Trademark.
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 trademark 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 divert to the Respondent’s website with pay-per-click hyperlinks for things like “Job Application” and “Apply Jobs”, which divert Internet traffic to commercial websites, which feature advertisements for job placement services, or putative job opportunity listings from various companies. This use demonstrates neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domains.
The Respondent has configured the disputed domain name to send fraudulent emails from the email address “[...]@jobsatgrainger.com”. The Complainant assumes that the disputed domain name is being used to defraud potential job seekers with the Complainant by either charging them for fraudulent job application services that will not be provided, or simply obtaining their personal and/or financial information for identity theft purposes. It is the Respondent’s unauthorized use of the Trademark which creates an air of legitimacy to the Respondent’s fraudulent scheme. The disputed domain name and related email addresses clearly are not, and cannot be, legitimate or associated with the Complainant.
Finally, the Respondent has also listed the disputed domain name for sale for USD 925 on AfterNIC. The Respondent’s attempt to sell the disputed domain name well in excess of its out-of-pocket costs, while the Respondent was well aware it contains the Trademark, does not create rights and legitimate interests.
The Complainant assumes that the Respondent registered and is using the disputed domain name in bad faith.
The mere fact that the Respondent has registered a domain name that incorporates the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith. In addition, the Respondent also had constructive knowledge of the Trademark because of the Complainant’s registration of the Trademark in the United States, and Africa where the Respondent purportedly resides, based on: WIPO’s Notice of Registrant Information; the Respondent’s website and hyperlink ads targeting US jobseekers; and the Respondent’s offer to sell the disputed domain name for USD 925 on AfterNIC.
The Complainant further assumes that the Respondent’s bad faith use of the disputes domain name is similarly clear.
Almost a century after the Complainant established its rights in the Trademark, the Respondent acquired and began commercially using the disputed domain name which is confusingly similar to the Trademark to divert Internet traffic intended for the Complainant to the Respondent’s website featuring pay-per-click ads for job placement services and job openings with various companies. The registration and commercial use of the disputed domain name in such a manner demonstrates registration and use in bad faith because the Respondent is intentionally attempting to attract Internet users to the Respondent’s websites for commercial gain by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
Furthermore, the Respondent used the disputed domain name to send emails through the “[...]@jobsatgrainger.com” email address, which is used to charge jobseekers interested in the Complainant for fraudulent application processing services or to steal their personal or company information, and simply defrauds consumers by falsely purporting to convey information about job opportunities with the Complainant. The fact that the whole modus operandi of the Respondent is fraudulent establishes that the use of the disputed domain name is in bad faith.
The Respondent also either used a proxy service to register the disputed domain name, or purposefully selected a registrar that automatically redacts all registrant contact information. Use of a privacy or proxy registration service or selection of a registrar as such, to shield its identity and elude enforcement efforts by the legitimate trademark owner demonstrates the Respondent’s bad-faith use and registration of the disputed domain name.
The Respondent has also listed the disputed domain name for sale for up to USD 925 on AfterNIC, which is clearly far in excess of the Respondent’s investment in the domain name. The attempt to sell a domain name consisting of a well-known trademark where the Respondent has knowledge of such trademark in excess of the Respondent’s investment relative to the domain name constitutes bad faith registration and use of the domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, 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
(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.
The Complainant has provided evidence of its registrations for many trademarks which incorporate the word GRAINGER, both in the United States and in other countries and has thereby established its rights in this mark.
The disputed domain name comprises the entirety of the Trademark, changing the mark only by adding the descriptive prefix “jobs” and “at”, plus the generic top-level domain (“gTLD”) “.com” after the Trademark. The mere addition of generic terms and a gTLD to a complainant’s trademark fails to produce a domain name distinct from the complainant’s trademark. Here, the Complainant’s Trademark is clearly recognizable within the disputed domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights and the element under paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).
It is well established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9).
In this case, the Panel finds that the Respondent is indeed not making a bona fide offering of goods or services as the links on the websites at the disputed domain names divert to websites with pay-per-click hyperlinks for things like “Job Application” and “Apply Jobs”, which divert Internet traffic to commercial websites, which feature advertisements for job placement services, or putative job opportunity listings from various companies. These uses demonstrate neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domains.
Numerous panel decisions support the proposition that a respondent’s fraudulent email activities and impersonation of a complainant indicates that a respondent has no rights or legitimate interests in a domain name, and that a respondent is not engaging in a legitimate noncommercial or fair use of the domain name. See, e.g., Arkema France v. Pepi Robert,WIPO Case No. D2014-1055; GEA Group Aktiengesellschaft v. J. D.,WIPO Case No. D2014-0357; Demco, Inc. v. Adminprivateregcontact a/k/a Demco USA,WIPO Case No. D2011-1516; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge,WIPO Case No. D2009-1017 and W.W. Grainger, Inc v. Mark Grabill, McDonald Service Inc.,WIPO Case No. D2021-2402.
The Respondent used the disputed domain name to send emails through the “[...]@jobsatgrainger.com” email address, as a result of which the Respondent deceives consumers by falsely pretending that the email is originating from the Complainant. This constitutes another indication that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name to rebut the Complainant’s prima facie case.
The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain names and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithIt is highly unlikely that the Respondent had no knowledge of the Trademark at the time of filing of the disputed domain name, as evidenced by the choice of a domain name that contains a famous mark, with a wholly descriptive addition, targeting US Jobseekers (while the Respondent purportedly resides in Nigeria).
The Complainant has submitted evidence that the disputed domain name resolves to an active webpage containing PPC links that are redirected to commercial websites, which feature advertisements for job placement services, or putative job opportunity listings from various companies, in which the Complainant is not involved in this at all. This demonstrates that the Respondent uses the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trademark.
The Respondent’s bad faith is also demonstrated by the use of the disputed domain name to send emails through the “[...]@jobsatgrainger.com” email address, as a result of which the Respondent deceives consumers by falsely pretending that the email is originating from the Complainant.
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 Trademark; 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.
The Respondent also either used a proxy service to register the disputed domain name, or purposefully selected a registrar that automatically redacts all registrant contact information. Panels have viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith (see WIPO Overview 3, section 3.6).
Based on the totality of evidence presented to the Panel, including the confusing similarity between the disputed domain name and the Trademark, the distinctive nature of the Trademark, the fact that the disputed domain name is being used for PPC links that are redirected to commercial websites, which feature advertisements for job placement services, or putative job opportunity listings from various companies, 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, the use of a proxy service to register the disputed domain name and the fact that no Response was submitted by the Respondent in response to the Complaint, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith, and accordingly, paragraph 4(a)(iii) of the Policy is satisfied.
7. DecisionFor 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
Richard van Oerle
Sole Panelist
Date: January 2, 2022