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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

W.W. Grainger, Inc. c. Registration Private, Domains By Proxy, LLC / Yabani Eze

Case No. DMX2021-0025

1. The Parties

The Petitioner is W.W. Grainger, Inc., United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.

The Holder is Registration Private, Domains By Proxy, LLC, United States / Yabani Eze, Nigeria.

2. The Domain Name and Registrar

The Registry of the disputed domain name <greinger.com.mx> (the “Disputed Domain Name”) is Registry .MX, a division of NIC México. The Registrar is GoDaddy.com (the “Registrar”).

3. Procedural History

The Request was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 8, 2021, the Center transmitted by email to Registry .MX a request for registrar verification in connection with the Disputed Domain Name. On September 15, 2021, Registry .MX transmitted by email to the Center its verification response disclosing the registrant and the contact data of the Disputed Domain Name which differed from the name of the Holder and the contact data indicated in the Request. The Center sent an email communication to the Petitioner on September 17, 2021, providing the Holder’s name and the data information revealed by Registry .MX, and inviting the Petitioner to amend the Request. The Petitioner filed an amended Request on September 20, 2021

The Center verified that the Request and amended Request satisfied the formal requirements of the Dispute Resolution Policy on .MX Domain Names (the “LDRP” or “Policy”), the Regulation of the dispute resolution policy for .MX domain names (the “Regulation”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

The Center sent an email communication in English and Spanish to the parties on September 17, 2021 regarding the language of the proceeding, noting that the Request was submitted in English, and article 13 of the Regulation establishes that unless the parties decide otherwise, the language of the procedure will be in Spanish, subject to the authority of the group of experts to determine otherwise, having regard on the circumstances of the case. The Petitioner submitted a request for English to be the language of the proceeding on September 20, 2021. The Holder did not comment on the language of the proceeding.

In accordance with Article 4 of the Regulation, the Center formally notified in both Spanish and English the Holder of the Request, and the proceedings commenced on September 27, 2021. In accordance with Article 5 of the Regulation, the due date for Response was October 17, 2021. The Holder did not submit any response. Accordingly, the Center notified the Holder’s default on October 18, 2021.

The Center appointed Luis C. Schmidt as the sole panelist in this matter on November 2, 2021, upon receipt of this Expert’s Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Article 9 of the Regulation. This Panel finds that it was properly constituted.

4. Factual Background

The Petitioner is one of the world leading companies in the field of industrial supplies and MRO products.

The Petitioner holds trademark registrations for GRAINGER and GRAINGER and Design around the world, including numerous registrations with the United States Patent & Trademark Office (“USPTO”), such as USPTO Reg. No. 2,039,641 (registered February 25, 1997); USPTO Reg. No. 1,747,557 (registered January 19, 1993); USPTO Reg. No. 1,559,199 (registered October 3, 1989); USPTO Reg. No. 2,128,519 (registered January 13, 1998); USPTO Reg. No. 3,256,911 (registered June 26, 2007); USPTO Reg. No. 3,256,912 (registered June 26, 2007); USPTO Reg. No. 2,998,326 (registered September 20, 2005); and USPTO Reg. No. 3,053,642 (registered January 31, 2006). The Petitioner also holds several USPTO registrations for other marks comprising the “GRAINGER” word.

In Mexico, the Petitioner is the holder of the following trademark registrations: Registration No. 499078 for GRAINGER (registered January 17, 1995), Registration No. 504219 for GRAINGER (registered September 19, 1995), Registration No. 476595 for GRAINGER (registered November 10, 1994), Registration No. 913482 for GRAINGER and Design (registered December 13, 2005), Registration No. 852401 for GRAINGER and Design (registered September 22, 2004), Registration No. 912702 for GRAINGER and Design (registered July 12, 2005), Registration No. 884310 for GRAINGER and Design (registered May 30, 2005), Registration No. 872663 for GRAINGER and Design (registered March 23, 2005).

The Petitioner also has trademark registrations for its GRAINGER mark in at least 80 other countries.

The Disputed Domain Name <greinger.com.mx> was registered on July 26, 2021.

The Petitioner sent a cease-and-desist letter to the Holder at the email address listed in the WhoIs information on August 16, 2021, asking the Holder to disable and transfer the Disputed Domain Name back to the Petitioner; the Holder did not respond to that.

Additionally, the Holder used the Disputed Domain Name for a website which contained pay-per-click advertisement links.

5. Parties’ Contentions

A. Petitioner

The Petitioner’s main submissions are as follows:

The Petitioner W.W. Grainger, Inc. (“Grainger”) is a publicly traded company on the New York and Chicago Stock Exchanges under the symbol GWW. It has been in business for over 85 years, and with more than 1.4 million products available, 681 branches, almost 24,000 employees worldwide, and over USD 10 billion in annual sales, Grainger is North America’s leading broad line supplier of maintenance, repair and operating (MRO) products, and the 13th largest online retailer in North America. Grainger also has operations in Asia, Europe and Latin America, including Mexico.

The Petitioner also owns multiple trademark registrations for trademarks incorporating its famous GRAINGER trademark in the United States, Mexico, and many other countries.

The Petitioner operates a website accessible at “www.grainger.com” and Grainger Mexico operates a website accessible at “www.grainger.com.mx”. On its websites, the Petitioner prominently uses its GRAINGER trademark, and features general information regarding its various products and services.

The Disputed Domain Name <greinger.com.mx> is virtually identical to the Petitioner’s GRAINGER mark in that it merely replaces the letter “a” in GRAINGER with the similar sounding letter “e” and adds the generic top-level domain (“gTLD”) “.com” and the country code Top-Level Domain (ccTLD) “.mx”.

Without the Petitioner’s authorization or consent, the Holder registered the Disputed Domain Name, which, misappropriates and is confusingly similar to the Petitioner’s GRAINGER trademark. The Holder is not commonly known by the Disputed Domain Name, has not used or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services, and has not been authorized, licensed, or otherwise permitted by the Petitioner to register or use the Disputed Domain Name.

The Holder has never operated any legitimate business under the Disputed Domain Name and is not making a protected noncommercial or fair use of the Disputed Domain Name. Instead, the Holder is using it to post a website with pay-per-click (“PPC”) or affiliate advertising links to websites connected to competitors of the Petitioner. This does not demonstrate rights or legitimate interests.

The Holder is offering the Disputed Domain Name for sale on a domain name marketplace for USD 925. The attempt to sell a domain name consisting of the well-known GRAINGER trademark where the Holder has knowledge of such trademark, in excess of the Holder’s investment relative to the Disputed Domain Name, constitutes bad faith registration and use.

Long after the Petitioner established its rights in its well-known GRAINGER trademark, and with knowledge of those trademarks, the Holder acquired the confusingly similar Disputed Domain Name to redirect Internet traffic to third party websites garnering affiliate advertising revenue for commercial gain including to websites advertising products similar or competitive to the Petitioner’s products, or to the Petitioner’s own website.

The Holder used a privacy service to register the Disputed Domain Name. Use of a privacy service to shield its identity and elude enforcement efforts by the legitimate trademark owner demonstrates the Holder’s bad-faith use and registration of the Disputed Domain Name.

Additionally, there have been other decisions against the Holder with similar factual circumstances. The Petitioner says there have been at least 10 decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) against the Holder Yabani Eze / Sugarcane Internet Nigeria Limited, which concern the Holder registering and using domain names incorporating well-known and famous marks ( see e.g. CSC Brands LP v. Domain Admin, Privacy Protect, LLC / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-0991 and International Business Machines Corporation v. Privacy Protection, Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2021-0727). The panels in all those cases found the Holder did not have rights or legitimate interests and registered and used those domain names in bad faith, resulting in transfers or cancellation of the involved domain names.

Further, the Petitioner says the Disputed Domain Name has active Mail eXchanger (“MX”) records. Those active MX records indicate use for email, which evidences a likelihood of additional bad-faith use of the Disputed Domain Name to engage in fraudulent email or phishing communications.

B. Holder

The Holder did not reply to the Petitioner’s contentions.

6. Discussion and Findings

Preliminary matters

Due to the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), this Expert considers convenient to refer, where appropriate, to decisions rendered under the UDRP.

The burden for the Petitioner, under paragraph 1.a of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a registered trademark or service mark, a registered commercial advertisement, an appellation of origin or a reservation of rights on which Petitioner has rights; and (ii) that the Holder has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered or is used in bad faith.

The Panel notes that no communication has been received from the Holder. However, given the Request and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 1.2 (A) of the LDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Request and to draw inferences from the Holder’s failure to file any Response. While the Holder’s failure to file a Response does not automatically result in a decision in favor of the Petitioner, the Panel may draw appropriate inferences from the Holder’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where one of the named Holders (“Domains By Proxy, LLC”) appears to be a privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Holder to be Yabani Eze and references to the Holder are to that person.

A. Language of the Proceeding

The Request was filed in English. The Petitioner solicited that the Request be accepted in English and that the proceeding be conducted in English, after considering the following facts: i) The Holder disseminated information in English through the disputed domain name. Therefore, it is clear that the Holder is fluent in English; and ii) the Petitioner and its counsel only speak English.

The Holder did not refute the reasons provided by the Petitioner to select English over Spanish as the language of the proceeding. The Panel further notes that the Holder has provided at the time of the registration of the Disputed Domain Name an address located in Nigeria.

Based in article 13 of the Regulation, which establishes that “[u]nless the parties decide otherwise, the language of the procedure will be in Spanish, subject to the authority of the group of experts to determine otherwise, having regard on the circumstances of the case.” The Panel in view of the circumstances of the case determines that English shall be the language of the proceeding.

B. Identical or Confusingly Similar

The Petitioner has satisfied the first requirement. While the Disputed Domain Name <greinger.com.mx> is not identical to the GRAINGER trademarks of Petitioner, it is confusingly similar as, in neglecting the unimportant part .com.mx, both terms are almost identical, varying only in one letter (“e” instead of “a”). Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the GRAINGER trademark.

C. Rights or Legitimate Interests

While the overall burden of proof is on the Petitioner, Panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).

Furthermore, the nature of the Disputed Domain Name, comprising a typographic variation of the Peitioner’s widely-known mark, and the use of the Disputed Domain Name, taking advantage of the Petitioner’s mark to attract Internet users to the Holder’s website, cannot be considered a use that give rise to rights or legitimate interests. See section 2.9 of the WIPO Overview 3.0.

D. Registered or Used in Bad Faith

The Petitioner is the owner of the registered trademark GRAINGER, and has registered and used such trademark in many jurisdictions around the world, long before the registration of the Disputed Domain Name. The Petitioner’s trademark is therefore well-known and has recognition, in different jurisdictions, for decades.

It is unimaginable for this Panel that the Holder registered the Disputed Domain Name consisting in a typographic variation of the Petitioner’s well-known mark without knowledge of the Petitioner’s rights, which leads to the necessary inference of bad faith.

Additionally, the Disputed Domain Name resolves to a webpage using pay-per-click advertisement links such that lead to websites offering goods that are in competition with the Petitioner’s goods and services.

Moreover, the Petitioner sent cease-and-desist letters to the Holder asking for the Holder to disable and transfer the Disputed Domain Name to the Petitioner. The Holder did not reply, it rather continued using the Disputed Domain Name to address a website using PPC links; this is additional evidence of bad faith usage (see International Business Machines Corporation v. Peter Malandrinos, WIPO Case No. D2020-2736).
In the case at hand, the Holder has also used a proxy service for the registration of the Disputed Domain Name. As stated in section 3.6 of WIPO Overview 3.0, “Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. In some cases, particularly where the respondent does not avail itself of the opportunity to respond to claims based on the timing of the registration of the Disputed Domain Name (such as a materially relevant change in underlying registrant), panels have been prepared to infer that the use of a privacy or proxy service may seek to mask the timing of the respondent’s acquisition of the domain name. Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”.

As an additional element suggesting bad faith in the circumstances of this case, the Panel notes that no response has been filed by the Holder.

Furthermore, as evidenced by the Petitioner, the Holder is engaged in a cybersquatting pattern of conduct.

The Panel finds that Holder is involved in “cybersquatting” by registering domain names comprised of well-known marks without having any legitimate interest over them. This is evidenced in the following decisions: American Airlines, Inc. v. Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2021-2182; International Business Machines Corporation v. Privacy Protection, Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2021-0727; Accenture Global Services Limited v. Privacy Protection / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2021-0311; Government Employees Insurance Company (“GEICO”) v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2021-2393; Sanofi v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-1779; Crédit Industriel et Commercial S.A. v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-1763; CSC Brands LP v. Domain Admin, Privacy Protect, LLC / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. D2020-0991; Sodexo v. Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. DCO2021-0032; Novartis AG v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. DCO2021-0025; Government Employees Insurance Company (“GEICO”) v. Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. DCO2021-0018; Barrett Steel Limited v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. DCO2020-0045; Boehringer Ingelheim Pharma GMBH & CO. KG v. Privacy Protect, LLC (PrivacyProtect.org) / Yabani Eze, Sugarcane Internet Nigeria Limited, WIPO Case No. DCO2020-0041.

In registering conflicting domain names and the current Disputed Domain Name, the Holder has demonstrated its intentions in registering typo-variants of widely-known trademarks. The fact that the Disputed Domain Name is a typo-variant of the Petitioner’s mark leads to the conclusion that the Holder had a probable intention of capitalizing on such a mark. As stated by a previous panel, “typosquatting is inherently parasitic and of itself evidence of bad faith”, National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011.

In considering a pattern of conduct, previous UDRP panels have found as follows: Vitro,S.A. de C.V., Vitro Vidrio y Cristal, S.A. de C.V. and Vitro Global, S.A. v. ICG, WIPO Case No. D2005-1150, “the consensus view of UDRP [p]anelists is that a pattern of conduct can involve multiple UDRP cases with similar fact situations or a single case where the respondent has registered multiple domain names which are similar to known trademarks...” Alternatively, in NBTY, Inc. v. LaPorte Holdings, WIPO Case No. D2005-0835 it was stated that a pattern of bad faith conduct is “previous conduct found to be in breach of the Policy by ... the registration of a large number of domain names the subject of one complaint... and/or ... the registration of domain names against multiple complainants.”

The Panel finds that the Holder has been involved in a pattern of such conduct.

Therefore, the Panel is convinced that the Holder registered the Disputed Domain Name to take unfair advantage of the reputation of the Petitioner ’s well-known trademark Grainger, and in so doing to disrupt the Petitioner’s business and to attract, for commercial gain, Internet users to another website, by creating a likelihood of confusion with the Petitioner’s trademark as to the source, sponsorship, affiliation, or endorsement.

On the basis of these facts and findings, it is for the Panel incontestable that the Disputed Domain Name was registered and is being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Articles 1 of the Policy and 19 and 20 of the Regulation, this Panel orders that the Disputed Domain Name <greinger.com.mx> be transferred to the Petitioner.

Luis C. Schmidt
Sole Panelist
Date: November 18, 2021

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