WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Lincoln Electric Company v. Registration Private, Domains By Proxy, LLC / Floria Zhou
Case No. D2019-2452
1. The Parties
Complainant is The Lincoln Electric Company, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Floria Zhou, United States.
2. The Domain Name and Registrar
The disputed domain name <lincolnelectricc.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 2019, 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 October 11, 2019 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 October 15, 2019.
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 October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 13, 2019.
The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on November 26, 2019. 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 a United States company, established in 1895, operating in the field of design, development and manufacture of welding products and systems. Complainant operates 60 manufacturing locations in 19 countries, with sales in 160 countries. The Complainant employs 11,000 employees worldwide and reported sales of USD 3 billion in 2018.
Complainant is the proprietor of trademark registrations for the mark LINCOLN ELECTRIC (the “Mark”), including the following:
- United States registration No. 2350082 for LINCOLN ELECTRIC (word mark) for goods in class 9, registered on May 16, 2000, claiming a date of first use in commerce in 1915;
- United States registration No. 2420805 for LINCOLN ELECTRIC (word mark) for services in class 35, registered on January 16, 2001, claiming a date of first use in commerce in 1956;
- United States registration No. 3114157 for LINCOLN ELECTRIC (word mark) for goods in class 6, registered on July 11, 2006, claiming a date of first use in commerce in 1956.
Complainant operates its primary website at the domain <lincolnelectric.com>, and is the proprietor of over 700 domain names containing the Mark.
The Domain Name was registered on September 27, 2015. It does not resolve to an active website.
In August 2019, prior to commencing this proceeding, Complainant sent Respondent three notice letters by email. Respondent did not reply.
5. Parties’ Contentions
Complainant’s submissions may be summarized as follows:
Under the first element, Complainant alleges that it has rights in the Mark based on use and registrations in numerous countries, including the United States. The Domain Name contains the Mark in its entirety, simply adding the letter “c”. Such a deliberate misspelling is typosquatting and does not decrease the similarity between the Domain Name and the Mark. Eliminating the space between the two words in the Mark does not distinguish the Domain Name from the Mark. The Domain Name is confusingly similar to the Mark in sight and sound.
Under the second element, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s Mark in any manner. The name of Respondent, Floria Zhou, does not resemble the Domain Name, and there is no evidence that Respondent has ever been known by the Domain Name. The Domain Name resolves to a blank website, which demonstrates that Respondent has not demonstrated any attempt to make legitimate use of the Domain Name. Respondent registered the Domain Name significantly after Complainant established rights in the Mark.
Under the third element, Complainant alleges that the Domain Name has been registered and used by Respondent in bad faith. The Mark is known internationally. Complainant has used the Mark since 1915, which is well before the September 27, 2015 registration date of the Domain Name. By registering a Domain Name that is so similar to Complainant’s Mark, Respondent has demonstrated familiarity with Complainant’s Mark. The Domain Name so closely resembles the Mark that bad faith is strongly implied.
At the time of the registration of the Domain Name, Respondent knew or should have known of the existence of Complainant’s Mark. Complainant is the world leader in its industry, operating 60 manufacturing locations in 19 countries and a sales network in 160 countries. The Domain Name is a deliberate misspelling of Complainant’s Mark, designed to take advantage of traffic generated by typing errors. Typosquatting has been recognized by previous panels as evidence of bad faith registration and use. The Domain Name resolves to an inactive site, and previous panels have recognized that passive holding can constitute bad faith use and registration. The Domain Name effectively impersonates Complainant, and an online tool reveals that, while the Domain Name does not resolve to an active website, email servers have been configured for it, which may imply that the Domain Name could be used for phishing or other such uses. There is no plausible good faith active use to which the Domain Name could be put.
Respondent failed to respond to Complainant’s notice letters, and used a privacy service to hide its identity. On balance of the facts, it is more likely than not that Respondent knew of and targeted Complainant’s Mark, and Respondent should be found to have registered and used the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(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) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence establishing that it has trademark rights in the Mark through registrations in jurisdictions including the United States, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s Mark with the Domain Name, the Panel finds that the Domain Name is confusingly similar with the Mark, since the Domain Name is an obvious and intentional misspelling of the Mark. The addition of the final letter “c” falls well within the types of activities acknowledged by previous UDRP panels as “typosquatting.” See WIPO Overview 3.0, section 1.9 and cases cited thereunder, particularly Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, <edmundss.com>.
It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the Domain Name does not prevent the Domain Name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. The Panel finds that there is no evidence that Respondent is commonly known by the Domain Name or is using the Mark with permission of Complainant. Rather, the case materials contain Complainant’s express assertion that such permission does not exist. Complainant’s rights in Mark predate the registration of the Domain Name by approximately a century.
The circumstances and evidence indicate that Respondent has no rights or legitimate interests in the Domain Name. The nature of the Domain Name (adding a letter to Complainant’s Mark) cannot constitute fair use because it effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner (see WIPO Overview 3.0, section 2.5.1).
Once Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy showing that Respondent has no rights or legitimate interests in the Domain Name, the burden of production shifts to Respondent (see, for example, L’Oréal v. Zhao Jiafei, WIPO Case No. D2015-1458). Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the Domain Name.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the evidence in the record demonstrates that Respondent chose the Domain Name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Mark predate the registration of the Domain Name by many years. The Mark is highly distinctive in respect of the goods and services for which it is registered and used, and Complainant’s rights in the Mark have been of significant duration. The Domain Name contains a deliberate misspelling of Complainant’s Mark. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4.
Having established that the Domain Name was registered in bad faith, the Panel next turns to the issue of whether the passive holding of the Domain Name constitutes bad faith use. Considering the totality of the circumstances, the Panel finds that the test for bad faith set out in Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003, has been met. In particular, the Panel finds that Complainant’s Mark is highly distinctive, Respondent has failed to file any response or provide any evidence of actual or contemplated good-faith use, Respondent concealed its identity through use of a privacy service, and it is highly implausible that the Domain Name may be put to any good-faith use.
In the view of the Panel, such circumstances, taken together, clearly indicate that Respondent registered and used the Domain Name in bad faith. The Panel finds that Complainant has established the third element under paragraph 4(a) 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 Domain Name <lincolnelectricc.com> be transferred to Complainant.
Date: December 10, 2019