WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
W.W. Grainger, Inc v. Mark Grabill, McDonald Service Inc.
Case No. D2021-2402
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 Mark Grabill, McDonald Service Inc, United States.
2. The Domain Name and Registrar
The disputed domain name <graianger.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2021. On July 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 24, 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 August 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2021.
The Center appointed Martin Schwimmer as the sole panelist in this matter on September 13, 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
The Complainant, W.W. Grainger, Inc., is a publicly traded North American supplier of maintenance, repair, and operating (MRO) products, and the 13th largest online retailer in North America. Grainger also has operations in Europe, Japan, and Latin America and has been in business for over 85 years. It has used the GRAINGER trademark since at least as early as 1928.
The Respondent registered the Domain Name <graianger.com> (emphasis added), but sent out emails to vendors ordering products, which emails purported to come from W.W. Grainger (correctly spelling the Complainant’s trademark).
5. Parties’ Contentions
The Complainant owns multiple trademark registrations for trademarks incorporating its famous GRAINGER trademark.
The Domain Name is virtually identical to the Complainant’s GRAINGER mark in that it merely adds an extra letter “a” to the Complainant’s famous mark after the letter “I,” and adds the generic Top-Level Domain (“gTLD”) “.com”. Furthermore, the letter “a” was undoubtedly selected as a likely misspelling of the Complainant’s trademark through the inadvertent repetition of the previous letter “a” in the mark. Such an alteration to the Complainant’s mark does not negate its confusing character and comprises typosquatting.
The Complainant asserts also that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered without the Complainant’s authorization or consent. The Respondent is not commonly known by the Domain Name, nor are there any trademark applications or registrations in the name of the Respondent anywhere in the world which incorporate the word GRAINGER. Furthermore, the Respondent has not used, or prepared to use, the Domain Name in connection with a bona fide offering of goods and services, nor has it been licensed or otherwise permitted by the Complainant to register and/or use the Domain Name.
The Respondent is using the Domain Name to engage in phishing emails that impersonate the Complainant. Specifically, the Respondent created the email address “[...]@graianger.com” using the address to impersonate the Complainant and to defraud the Complainant’s vendors and clients, and to trick them into sending products or money to the Respondent.
It is clear that the Respondent was impersonating the Complainant based on the Domain Name being virtually identical to the GRAINGER mark and based on the content of those phishing email messages, in which the Respondent falsely used the name of a former employee of the Complainant and used the Complainant’s name W.W. Grainger, Inc. and address in the signature block of that phishing email.
Additionally, the Domain Name resolved to an inactive error web page. This passive holding of the Domain Name further supports that the Respondent is not making any bona fide or legitimate business use of the Domain Name.
Furthermore, the Domain Name was registered and is being used in bad faith. The Respondent clearly had actual knowledge of the Complainant’s GRAINGER mark, as it engaged in a fraudulent scheme to impersonate the Complainant and steal products or money from the Complainant’s vendors or clients.
Additionally, the Respondent’s use of the Domain Name to passively host an inactive website is a further indication of the Respondent’s bad faith use and registration of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has provided evidence of its trademark registrations for GRAINGER. It owns many trademarks, both in the United States and in other countries. These include, by way of example only, United States Trademark registration number 1,559,199 for GRAINGER in class 9, registered on October 3, 1989.
The Complainant also demonstrated use of its GRAINGER trademark at its website at “www.grainger.com”.
For the purpose of considering whether the Domain Name is identical or confusingly similar to the Complainant’s GRAINGER mark, the gTLD “.com” is disregarded as this is a technical requirement of registration.
The Domain Name comprises the entirety of the Complainant’s mark, with the addition of the letter “a,” which addition does not create a recognizably different word or words. Accordingly, the added letter does not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
Here, the Complainant’s GRAINGER mark is clearly recognizable within the Domain Name. The Panel therefore finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark in issue.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered without the Complainant’s authorization or consent. The Respondent is not commonly known by the Domain Name, nor are there any trademark applications or registrations in the name of the Respondent anywhere in the world which incorporate the word GRAINGER. Furthermore, the Respondent has not used, or prepared to use, the Domain Name in connection with a bona fide offering of goods and services, nor has it been licensed or otherwise permitted by the Complainant to register and/or use the Domain Name.
The Complainant alleges that the Respondent used the Domain Name to engage in phishing emails sent to vendors, impersonating the Complainant. Specifically, the Respondent created the email address “[...]@graianger.com”, using the Domain Name to impersonate the Complainant and defraud the Complainant’s vendors and clients and trick them into sending products or money to the Respondent. The Respondent falsely used the name of a former employee of the Complainant and used the Complainant’s name W.W. Grainger, Inc., spelled correctly, in the signature block of such emails.
Numerous panel decisions support the proposition that a respondent’s fraudulent email activities and impersonation of a complainant indicates that a respondent has no rights or legitimate interests in a domain name, and that a respondent is not engaging in a legitimate noncommercial or fair use of the domain name. See, e.g., Arkema France v. Pepi Robert, WIPO Case No. D2014-1055; GEA Group Aktiengesellschaft v. J. D., WIPO Case No. D2014-0357; Demco, Inc. v. Adminprivateregcontact a/k/a Demco USA, WIPO Case No. D2011-1516; Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017.
Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the Domain Name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the Domain Name.
C. Registered and Used in Bad Faith
The Complainant has produced copies of emails purportedly from the Respondent, which emails consisted of orders for products from a vendor. The purchaser was identified in the body of the email as W.W. Grainger, Inc., the correctly spelled name of the Complainant. The sender of the email identified in the text bore the name of a former employee of the Complainant. The alias of the email username was “Grainger” (correctly spelled).
Simply put, the Respondent was aware of the Complainant, and used the Domain Name to impersonate it, probably to fraudulently obtain goods, or seek commercial advantage in some other way related to the impersonation. As such, the Respondent’s registration and use of the Domain Name clearly fall within the scope of paragraph 4(b)(iv) of the Policy, which provides for the cancellation of domain names registered in order to attract, for commercial gain, internet users by creating a likelihood of confusion with the complainant’s mark.
The Complainant has also argued that the Respondent’s use of the Domain Name to resolve to an inactive page also supports a finding of bad faith. In view of the bad-faith impersonation by the Respondent, the Panel need not discuss that argument, but notes that prior UDRP panels have found that in certain circumstances the passive holding of a domain name incorporating a widely-known or distinctive trademark does not prevent a finding of bad faith. See section 3.3 of the WIPO Overview 3.0. The Panel finds that the Domain Name was registered and used in bad faith.
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, <graianger.com> be transferred to the Complainant.
Date: October 24, 2021