WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W.W. Grainger, Inc. v. PPA Media Services, Ryan G Foo / Fundacion Private Whois
Case No. D2013-1854
1. The Parties
The Complainant is W.W. Grainger, Inc. of Lake Forest, Illinois, United States of America, represented by FairWinds Partners, LLC, United States of America.
The Respondent is PPA Media Services, Ryan G Foo of Santiago, Chile / Fundacion Private Whois of Panama, Panama.
2. The Domain Name and Registrar
The disputed domain name <grangersupply.com> is registered with Internet.bs Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 30, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2013, 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 4, 2013, 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 4, 2013.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint and amended Complaint, and the proceedings commenced on November 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 28, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2013.
The Center appointed Sir Ian Barker as the sole panelist in this matter on December 6, 2013. 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-listed company which is a major supplier in North America of facilities, maintenance, repair and operating supplies, including the sale of motors, hardware, industrial supplies, accessories and related parts.
Since 1927 it has traded under the GRAINGER mark. The GRAINGER mark is used extensively by the Complainant on catalogues, packaging and advertisements. The Complainant owns many retail outlets and operates a website under the domain name <grainger.com> where customers can order goods online. It also owns other domain names, including <graingersupply.com>.
The Complainant owns United States trademarks for GRAINGER. The first of these was registered on October 13, 1989. It has trademark registrations in other countries.
Although the disputed domain name was first registered in 2001, the Complainant provided evidence that would appear to indicate that the disputed domain name was acquired by the Respondent and placed under privacy on November 17, 2010.
The website accessed by the disputed domain name is a “pay-per-click” website which diverts Internet users to websites not associated with the Complainant and in some cases to websites of competitors of the Complainant. The Complainant’s registered trademark is in the title and body of the website at the disputed domain name.
The underlying Respondent, PPA Media Services, Ryan G Foo, whose identity was undisclosed because of a privacy shield, has been the Respondent in some 80 cases brought successfully against it under the Policy.
In some of the decisions, the Respondent has been called “a serial cybersquatter”. The Complainant gave the Respondent no rights to reflect its trademark in a domain name.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s registered trademark. In the disputed domain name, the world “grainger” is rendered as “granger”. These two words are pronounced in the same way. The added word “supply” in the disputed domain name, merely defines one aspect of the Complainant’s business. This is a classic case of “typosquatting” where there is the omission, addition or substitution in a domain name of just one letter found in a trademark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave it none.
The Respondent has failed to prove any of the circumstances under paragraph 4(c) of the Policy which might have provided a defence.
Bad faith registration and use can be inferred from the confusing similarity between the disputed domain name and the Complainant’s trademark. Persons going to the website at the disputed domain name could be confused into believing that that website had some sort of approval or authorisation from the Complainant.
The Respondent is obtaining commercial gain from the “click-through” site which uses the Complainant’s mark without consent. The Respondent must have been aware of the fame of the Complainant’s longstanding trademark when it acquired the disputed domain name. The content of the Respondent’s website shows that the Respondent had actual knowledge of the Complainant’s goods and was purposefully trading on the Complainant’s goodwill regulations.
The Respondent’s pattern of conduct shows a pattern of bad faith registrations. See paragraph 4(ii) of the Policy. The Complainant’s mark is tarnished by the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s registered trademark. Except for one letter, the disputed domain name incorporates all of the trademark. The additional word “supply” adds to the confusion because the principal business of the Complainant is that of a supplier.
The omission of the one letter “i“ in “grainger” does nothing to diminish the confusing similarity. This is yet another example of “typosquatting” whereby a domain name registrant omits, adds or substitutes one letter from the wording of a trademark in the hope that the Internet user will mis-type the search enquiry and will be diverted to the respondent’s website.
The practice of typosquatting has been universally denounced by UDRP panelists. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0“), paragraph 1.10.
Accordingly the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights to reflect its trademark in a domain name.
In the absence of any response from the Respondent, and in the circumstances of this case, the Panel finds that 4(a)(ii) of the Policy is satisfied.
The Respondent had the right under paragraph 4(c) of the Policy to demonstrate that one of the three limbs of that paragraph was applicable to it. But the Respondent has chosen not to present any evidence or response so accordingly, paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Complainant is correct to submit that the date for considering whether there was a bad faith registration is the date when the Respondent acquired the disputed domain name. See WIPO Overview 2.0 at paragraph 3.7.
It is easy to infer bad faith both at the deemed time of registration and currently from the following matters:
(a) The impression given to Internet users by the confusing similarity between the disputed domain name and the Complainant’s trademark.
(b) The use by the Respondent of the Complainant’s trademark on the Respondent’s website with the “click-through” to the sites of other businesses including competitors of the Complainant.
(c) The disruption caused to the Complainant’s business by the Respondent’s website which implies that the website has some sort of confirmation or affirmation from the Complainant.
(d) The resultant potential tarnishing of the Complainant’s trademark.
(f) The Respondent’s record as a “cybersquatter” in other proceedings under the Policy.
All of the above matters provide a basis for a bad faith finding. Taken in combination, the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <grangersupply.com> be transferred to the Complainant.
Sir Ian Barker
Date: December 17, 2013