WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W.W. Grainger, Inc. v. Domain Administrator, Fundacion Privacy Services Ltd.
Case No. D2021-0949
1. The Parties
The Complainant is W.W. Grainger, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Domain Administrator, Fundacion Privacy Services Ltd., Panama.
2. The Domain Name and Registrar
The disputed domain name <hrainger.com> (the “Domain Name”) is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 April 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on May 11, 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 Background
W.W. Grainger, Inc., the Complainant in the present proceedings, is a North American leading broad line supplier of maintenance, repair and operating (MRO) products, and the 13th largest online retailer in North America. It also has operations in Asia, Europe and Latin America. The Complainant has been in business for over 85 years.
The Complainant owns several GRAINGER trademark registrations with the United States Patent and Trademark Office (the “USPTO”), including:
- GRAINGER issued on February 25, 1997 (Registration No. 2,039,641);
- GRAINGER & Design issued on June 26, 2007 (Registration No. 3,256,911);
- GRAINGER CONSULTING SERVICES issued on April 10, 2001 (Registration No. 2,442,470);
- GRAINGER EXPRESS issued on January 9, 2001(Registration No. 2,419,839);
- GRAINGER FOR THE ONES WHO GET IT DONE & Design issued on August 15, 2006 (Registration No. 3,130,996);
- GRAINGER INDUSTRIAL SUPPLY issued on June 20, 2000 (Registration No. 2,360,132);
- GRAINGER LIGHTING SERVICES issued on December 2, 2014 (Registration No. 4,650,693);
- GRAINGER ONLINESAFETYMANAGER & Design (Horizontal) issued on October 30, 2012 (Registration No. 4,232,412);
- GRAINGER PARTS issued on March 6, 2001 (Registration No. 2,433,255);
- GRAINGER TOOLS FOR TOMORROW issued on January 1, 2008 (Registration No. 3,363,775);
- GRAINGER TRIPLEGUARD issued on July 16, 2002 (Registration No. 2,596,087);
- GRAINGER WORKBENCH issued on November 11, 2014 (Registration No. 4,635,697);
- GRAINGER.COM issued on October 13, 1998 (Registration No. 2,194,993).
The Complainant also has trademark registrations for its GRAINGER trademark in at least 80 other countries, including Registration No. 83908 for GRAINGER issued on April 20, 1998 and Registration Nos. 148548 and 148562 for GRAINGER & Design issued on January 27, 2006 in Panama, where the Respondent is purportedly located. The Complainant has used the GRAINGER trademark since at least as early as 1928.
The Complainant’s official domain name is <grainger.com>.
The Domain Name was registered on February 1, 2021.
On February 9, 2021, the Complainant sent an email to the Respondent advising the Respondent of the Complainant’s rights in its GRAINGER trademark and demanding that the Respondent cease and desist from all use of the Complainant’s GRAINGER mark and immediately transfer the Domain Name to the Complainant. The Respondent never responded to the Complainant’s email.
The Complainant attached to the Complaint screenshots showing that the Domain Name resolves to various websites, including websites that contain PPC advertising links, websites that redirect to advertising for other websites, as well as websites with deceptive offers to download malware. Also, the Complainant attached to the Complaint screenshots showing that the Domain Name was listed for sale on a domain name auction platform of GoDaddy.
5. Parties’ Contentions
The Complainant requests that the Domain Name be transferred to the Complainant.
First, the Complainant submits that the Domain Name is virtually identical to the GRAINGER mark in which the Complainant has rights.
Second, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Third, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2. of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds valid GRAINGER trademark registrations, which predate the registration of the Domain Name.
The Domain Name contains sufficiently recognizable aspects of the Complainant’s GRAINGER mark, which allow to consider the Domain Name confusingly similar to the Complainant’s trademark. In fact, the Domain Name incorporates the Complainant’s trademark in its entirety. The alteration of the letter “g” with the letter “h” to the Complainant’s mark does not negate the confusingly similar character of the Domain Name. As numerous UDRP panels have held, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant mark for purposes of the first element. See WIPO Overview 3.0, section 1.9.
The generic Top Level Domain (“TLD”) in the Domain Name “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the Domain Name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
As mentioned above, it results from the evidence in the record that the Complainant’s GRAINGER trademark registrations predate the Respondent’s registration of the Domain Name. Moreover, there is nothing in the record which would prove that the Complainant has authorized the Respondent to make use of the GRAINGER trademark or to register the Domain Name incorporating this trademark. Also, there is nothing in the record which would prove that the Respondent has made a legitimate noncommercial or fair use of the Domain Name or has an intention to use the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, the Respondent is using the Domain Name to redirect Internet users to websites that contain pay-per-click (PPC) links, and/or redirect to advertising for other websites competing with the Complainant’s business, and/or contain deceptive offers to download malware. Such use of the Domain Name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Moreover, the Respondent is not commonly known by the Domain Name. The WHOIS information identifies the Registrant as Domain Administrator, Fundacion Privacy Services LTD which does not resemble the Domain Name in any manner. As the Respondent is not commonly known by the Domain Name it cannot be regarded as having acquired rights or legitimate interests in the Domain Name.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As previously mentioned, the Complainant’s rights in the GRAINGER trademarks predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. It has been proven to the Panel’s satisfaction that the Complainant’s trademark is well-known. Thus, the Respondent could likely not reasonably have ignored the reputation of the products and services the trademark identifies.
The Panel finds that by reproducing the Complainant’s registered trademark in the Domain Name with mere alteration of the letter “g” with the letter “h”, the Respondent has intentionally attempted to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s mark. The use of PPC links or redirecting to other advertising websites is further evidence of bad faith. It constitutes a clear attempt to generate a commercial gain, particularly by misleading online users with the Domain Name, and subsequently redirecting these online users to third-party websites in order to capitalize on the reputation of the Complainant’s trademark. Also, the Respondent’s distribution of malware products through the websites resolving or redirecting from the Domain Name constitutes further evidence of bad faith.
In addition, the Complainant attached to the Complaint screenshots showing that the Domain Name was listed for sale on a domain name auction platform. While legitimate speculation in domain names does not necessarily constitute bad faith use, the nature of the Domain Name in this instance and its offer for sale does not support any claim to a good faith registration.
Moreover, the Panel acknowledges that the Domain Name has active mail exchange (MX) records. This entails the possibility that the Respondent can use the Domain Name to send fraudulent emails for phishing attempts or fraudulent activities. In consequence, this further creates an inference that the Respondent registered the Domain Name in bad faith. See also Conféderation Nationale du Crédit Mutuel, Crédit Industriel et Commercial v. Khodor Dimassi, WIPO Case No. D2016-1980.
Finally, the Respondent employed a privacy service when registering the Domain Name in order to conceal its identity, which is an indication of its bad faith. See Euromarket Designs, Inc. d/b/a Crate & Barrel v. Namesnet, WIPO Case No. D2000-1196; Inkkas, LLC v. Katherine Garcia, WIPO Case No. D2017-1992.
Given the above, the Panel finds that the 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 <hrainger.com> be transferred to the Complainant.
Date: May 25, 2021