WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

W.W. Grainger, Inc. v. Lisa Katz, Domain Protection LLC / Domain Hostmaster, Customer ID: 62528344484810, Whois Privacy Services Pty Ltd

Case No. D2016-1507

1. The Parties

Complainant is W.W. Grainger, Inc. of Lake Forest, Illinois, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.

Respondent is Lisa Katz, Domain Protection LLC of Dallas, Texas, United States / Domain Hostmaster, Customer ID: 62528344484810, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <wrgrainger.com> (the “Domain Name”) is registered with Fabulous.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 1, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on August 4, 2016.

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 Respondent of the Complaint, and the proceedings commenced on August 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 29, 2016.

The Center appointed John C McElwaine as the sole panelist in this matter on September 9, 2016. 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 one of North America’s leading suppliers of maintenance, repair and operating (“MRO”) products and the 13th largest online retailer in North America. Complainant also has operations in Asia, Europe and Latin America. Complainant operates its primary website at “www.grainger.com”.

Complainant has used the GRAINGER trademark since 1928 and owns multiple trademark registrations for trademarks incorporating the word GRAINGER with the United States Patent and Trademark Office (“USPTO”) in connection with the marketing of its goods and services, including:

GRAINGER – United States States Registration No. 2,039,641, registered on February 25, 1997;

GRAINGER – United States Registration No. 1,747,557, registered on January 19, 1993;

GRAINGER – United States Registration No. 1,559,199, registered on October 3, 1989;

GRAINGER – United States Registation No. 2,128,519, registered on January 13, 1998;

GRAINGER & Design – United States Registration No. 3,256,911, registered on June 26, 2007;

GRAINGER & Design – United States Registration No. 3,256,912, registered on June 26, 2007;

GRAINGER & Design – United States Registration No. 2,998,326, registered on September 20, 2005;

GRAINGER & Design (Color) – United States Registration No. 3,053,642, registered on January 31, 2006.

Complainant also has trademark registrations for its GRAINGER trademark in at least 80 other countries. A chart of these registrations was attached to the Complaint as Annex 9.

Respondent registered the Domain Name on March 25, 2005. The Domain Name resolves to a parking page with sponsored links to websites of Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

With respect to the first element, Complainant alleges that it has valid rights in the GRAINGER trademark by virtue of multiple trademark registrations throughout the world, including in the United States. In fact, Complainant specifically alleges to own a valid and incontestable United States federal trademark registration for GRAINGER, demonstrating Complainant’s rights in the GRAINGER mark under paragraph 4(a)(i) of the Policy. In addition, Complainant asserts that it operates a website accessible at the URL “www.grainger.com” and that on this website, Complainant prominently uses its GRAINGER trademark, and features general information regarding its various products and services.

Complainant asserts that the Domain Name is virtually identical to Complainant’s GRAINGER trademark merely adding the letters “wr” before Complainant’s allegedly famous mark. Complainant notes that its corporate name is “W.W. Grainger, Inc.” and that the letters “wr” and virtually identical to the letters “ww”.

With respect to the second element of the Policy, Complainant contends that Respondent is not commonly known by the Domain Name. Complainant also asserts that there is no relationship between Complainant and Respondent which might give rise to any license, permission, or other right by which Respondent could own or use any domain name incorporating Complainant’s GRAINGER trademark. Moreover, Complainant contends that Respondent’s use of the Domain Name does not constitute a legitimate noncommercial or fair use of the Domain Name and that Respondent is using the Domain Name to divert Internet traffic to commercial websites which feature advertisements for goods and services in direct competition with Complainant.

With respect to the third element of the Policy, Complainant first asserts that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because after Complainant acquired rights in the GRAINGER trademark, Respondent registered and is commercially using the Domain Name, which is confusingly similar to Complainant’s trademark to divert Internet traffic intended for Complainant to websites featuring advertising for goods and services in competition with Complainant.

Complainant also asserts that Respondent’s registration and use of the Domain Name to divert Internet traffic to Complainant’s competitors establishes Respondent’s bad-faith registration and use of the Domain Name under paragraph 4(b)(iii) of the Policy, because the Domain Name was registered for the purpose of disrupting the business of a competitor.

Complainant additionally asserts bad faith exists pursuant to paragraph 4(b)(ii) of the Policy, which provides that the registration of a domain name to prevent the owner from using its trademark in a domain name is evidence of bad faith where it is part of a pattern of such conduct. The pattern alleged here is that Respondent has been involved with 130 UDRP panel decisions finding Respondent “Whois Privacy Services Pty Ltd” registered domain names incorporating well-known marks in which it was found not to have any rights or legitimate interests, 50 of which occurred this past year. Similarly, there have been 29 panel decisions against Respondent Lisa Katz, Domain Protection LLC under the Policy, concerning instances of registering domain names incorporating well-known marks in which it was found not to have any rights or legitimate interests, 28 of which occurred this past year.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom (see St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. The Panel finds that Complainant owns trademark rights in the GRAINGER trademark that long predate the registration of the Domain Name. Moreover, the Panel finds that Complainant has established common law trademark rights in its trade name “W.W. Grainger, Inc.” that long predate the registration of the Domain Name.

The Panel finds that the Domain Name is confusingly similar to the GRAINGER trademark and a typo of the Complainant’s trade name. As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 1.10, the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. Similarly, UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights”. Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”) Here, the insertion of “wr” in the Domain Name is clearly confusingly similar to the GRAINGER trademark and W.W. Grainger trade name. Also, the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Domain Name typically does not avoid confusing similarity (see F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since use of a gTLD is technically required to operate the Domain Name.

The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to Complainant’s trademark.

B. Rights or Legitimate Interests

Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

Complainant contends that Respondent is not commonly known by the name “WR Grainger”. Moreover, Complainant asserts that Respondent is not a licensee or affiliate of Complainant and Respondent is not otherwise authorized to use the GRAINGER trademark in the Domain Name. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.

First, Respondent is not making a bona fide use of the Domain Name under paragraph 4(c)(i). When Respondent registered the Domain Name, Complainant had decades of established rights in the GRAINGER trademark and W.W. Grainger trade name. Under the Policy, registration and unauthorized use of another’s trademark in a domain name does not constitute a bona fide offering of goods and services. See Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001 (use of disputed domain name consisting of the complainant’s mark in connection with a parked page did not constitute a bona fide offering of goods and services); see Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139.

Respondent’s website located at the Domain Name consists of a parking page that advertises sponsored listings and related links. Clicking through these advertisements directs the user to either a website on which Complainant’s competitors advertise, or a new page containing additional sponsored listings and related links. Although the Panel recognizes that parking pages may be permissible in some circumstances, as discussed in paragraph 2.6 of WIPO Overview 2.0, none of those factors are present here. Instead, the Domain Name appears to have been registered with the intent that confused Internet users intending to search for Complainant’s website will instead be redirected to Respondent’s parked webpage for commercial gain. Such activity does not provide a legitimate interest in the Domain Name under the Policy. See, e.g., Delta-Sonic Carwash Systems, Inc. v. Radio plus, spol.s.r.o., WIPO Case No. D2015-1512. Additionally, this Panel agrees that generally, parking pages “confer no public benefits” but rather “are replete with public costs”. See, e.g., Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, WIPO Case No. D2011-1753. Parked sites “lock up domain names, preventing names from being used for creative, socially constructive purposes; they clutter search results and can divert Internet users from finding the websites and content for which they seek; and they can lead to costly domain name disputes…” Id.

As discussed above, Respondent failed to put forth any evidence that it is currently and or ever was commonly known by the name reflected in the Domain Name as to establish a right or legitimate interest in the Domain Name under paragraph 4(c)(ii) of the Policy. The WhoIs data discloses no hint of a connection with the name “W.R. Grainger”.

Lastly, Respondent is not making a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii). Instead, Respondent is seeking commercial gain from its use of the Domain Name by establishing a parked page with advertisements that compete with Complainant’s products. Therefore, the Domain Name is used for commercial purposes and paragraph 4(c)(iii) is not applicable. See Overstock.com, Inc. v. Metro Media, Case No. DME2009-0001 (“respondent’s use of the disputed domain name to establish a parking page was “plainly not ‘noncommercial’.”)

Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. The Panel has analyzed whether Respondent may possess rights or legitimate interest to the Domain Name. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name as set forth in the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Paragraph 4(b)(iv) of the Policy specifies that bad faith exists where a respondent, by using the disputed domain name, 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 its website or location or of a product or service on its website or location. Here, the Domain Name consists entirely of Complainant’s distinctive GRAINGER trademark. The content of the website displayed at the Domain Name establishes that Respondent has targeted Complainant’s trademark for Respondent’s pecuniary benefit and that Respondent has placed advertising that directly competes with Complainant on the website linked with the Domain Name. These targeted advertisements divert potential customers of Complainant to third-party sites where competing goods are sold and services rendered within the meaning of paragraph 4(b)(iv) of the Policy. Such activity constitutes a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy.

There is also substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (“the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null,” aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435. However, this Panel cites two additional elements to support finding of Respondent’s bad faith.

First, Respondent appears to have a long, and notably consistent, history of adverse UDRP decisions. See, Vitalife, Inc. dba Tabak’s Health Products v. Texas International Property Associates, WIPO Case No. D2007-0507 (finding that the amended respondent, the original registrant of the disputed domain name, had “a history of unfavorable UDRP decisions…”.) This complaint is only the latest in a long line of almost identical cases where Respondent has been found “typosquatting”. This Panel agrees that both Respondent Domain Hostmaster, Customer ID: 62528344484810, Whois Privacy Services Pty Ltd and Respondent Lisa Katz, Domain Protection LLC have a significant history of prior adverse UDRP proceedings, which is further evidence of bad faith.

Second, Respondent used a privacy service to shield its identity from the “Whois” database. Panels have recognized that, although privacy shields provide some benefits, they are often used for “more nefarious ends, such as obstructing proceedings under the UDRP, [and] hiding evidence of bad faith cybersquatting patterns…”. Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service, supra. Panels have found that there is a “lack of plausible justifications” for a parking website to use a privacy shield. Id; see also The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”, WIPO Case No. D2008-0156 (“The attempt by the Respondent to hide its identity… support[s] a finding of bad faith”.) There is no legitimate reason for Respondent to decide to hide its identity. Considered together with Respondent’s established history of cybersquatting, Respondent clearly utilized a privacy shield in order to mask its identity and pattern of cybersquatting abuse.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith.

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 Domain Name <wrgrainger.com> be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: September 27, 2016