WIPO Arbitration And Mediation Center
ADMINISTRATIVE PANEL DECISION
W.W., Grainger, Inc. v. Above.com Domain Privacy / Host master, Transure Enterprise Ltd
Case No. D2017-2601
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 Above.com Domain Privacy of Beaumaris, Victoria, Australia / Host Master, Transure Enterprise Ltd of Wilmington, Delaware, United States.
2. The Domain Name and Registrar
The disputed domain name <greainger.com> (the “Domain Name”) is registered with Above.com Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2017. On January 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 4, 2018, 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 January 5, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 11, 2018.
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 January 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 2, 2018.
The Center appointed Robert A. Badgley as the sole panelist in this matter on February 9, 2018. 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 has been in business for over 85 years. According to Complainant, it is North America’s leading broad line supplier of maintenance, repair, and operating products. Among Complainant’s products are safety gloves, ladders, motors, and janitorial supplies. Complainant also offers services like inventory management and technical support. Complainant also has operations in Asia, Europe, and Latin America. Grainger operates its primary website at “www.grainger.com”.
Complainant owns numerous trademark registrations, many going back for decades, for GRAINGER in connection with its products and services. For example, Complainant owns United States Patent and Trademark (“USPTO”) Reg. No. 1,559,199 (registered on October 3, 1989) for the mark GRAINGER. Complainant owns trademark registrations throughout the world, including an Australian registration dated January 24, 1997 (No. 726445) for the mark GRAINGER.
The Domain Name was registered on April 22, 2008. The Domain Name redirects to the website of Home Depot, a major retailer of products, many of which compete with Complainant’s products.
Complainant sent Respondent a cease-and-desist letter dated May 1, 2017. In the letter, Complainant alleged that Respondent derived revenue from users gaining access to the Home Depot site by means of the Domain Name. No response to the letter was received by Complainant.
5. Parties’ Contentions
Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the mark GRAINGER through longstanding registration and use. The Domain Name is confusingly similar to this mark. The Domain Name is identical to the mark except it adds the letter “e” after the “r”. This slight difference does not seriously diminish the confusing similarity between the mark and the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 concludes that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not come forward, in response to either the cease-and-desist letter or the Complaint, to identify its bona fides, if any, vis-à-vis the Domain Name. From the record, it is clear that Respondent is simply typo‑squatting and deriving revenue from Internet users misspelling the domain name they intended to enter. This is far from a legitimate interest in the Domain Name.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the Domain Name was registered and has been used in bad faith within the meaning of Policy paragraph 4(b)(iv), quoted above. It is obvious that Respondent had Complainant’s distinctive and well-known mark in mind when registering the Domain Name. The Domain Name is comprised solely of the mark GRAINGER, with one slight typo. The fact that Respondent has redirected the Domain Name to a website offering products in competition with Complainant’s products reinforces the likelihood that Respondent has targeted Complainant’s mark. Complainant has plausibly asserted that Respondent derives income from this misdirected Internet traffic, and Respondent has chosen not to dispute this assertion.
The Panel also finds Respondent in bad faith under Policy paragraph 4(b)(ii), quoted above. Specifically, as pointed out in the Complaint, Respondent Transure Enterprise Ltd has been found in bad faith in more than 100 prior decisions under the Policy. This supports a finding that Respondent is engaged in a pattern of preclusive registrations, and hence is in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
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 <greainger.com> be transferred to Complainant.
Robert A. Badgley
Date: February 9, 2018