WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

W.W. Grainger, Inc. v. 杨智超 (Yang Zhi Chao)

Case No. D2021-2198

1. The Parties

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

The Respondent is 杨智超 (Yang Zhi Chao), China.

2. The Domain Names and Registrar

The disputed domain names <drainger.com>, <graqinger.com>, and <hgrainger.com> are registered with DNSPod, Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on July 22, 2021.

On July 20, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On July 22, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2021.

The Center appointed Jonathan Agmon as the sole panelist in this matter on September 3, 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 company which has been in business for over 85 years. With more than 1.4 million products, 681 branches, almost 24,000 employees worldwide and over USD 10 billion in annual sales, the Complainant is a leading broad line supplier of maintenance, repair and operating products and one of the largest online retailer in North America. The Complainant also has operations in Asia, Europe and Latin America. Its official website is “www.grainger.com”.

The Complainant owns the following multiple trademark registrations for its GRAINGER marks and variations thereof in the United States and worldwide:

- U.S. Trademark Registration No. 1,559,199 for GRAINGER, registered on October 3, 1989;
- U.S. Trademark Registration No. 1,747,557 for GRAINGER, registered on January 19, 1993;
- U.S. Trademark Registration No. 2,039,641 for GRAINGER, registered on February 25, 1997;
- U.S. Trademark Registration No. 2,128,519 for GRAINGER, registered on January 13, 1998;
- U.S. Trademark Registration No. 3,256,911 for , registered on June 26, 2007;
- China Trademark Registration No. 3808738 for GRAINGER, registered on December 21, 2005; and
- China Trademark Registration No. 5738191 for , registered on November 21, 2009.

The disputed domain names <drainger.com>, <graqinger.com>, and <hgrainger.com> were registered on June 7, 2021, and resolve to active webpages containing pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered GRAINGER marks: the disputed domain name <drainger.com> merely replaces the first letter “g” in the Complainant’s GRAINGER mark with the letter “d” followed by the generic Top-Level Domain (“gTLD”) “.com”, the disputed domain name <graqinger.com> merely adds the letter “q” in the middle of the Complainant’s GRAINGER mark between letters “a” and “i” followed by the gTLD “.com”, and the disputed domain name <hgrainger.com> merely adds the letter “h” before the Complainant’s GRAINGER mark followed by the gTLD “.com”, all of which are insufficient to avoid confusing similarity.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names and that the Respondent is not known by the disputed domain names.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith for commercial gain by creating a likelihood of confusion with the Complainant’s GRAINGER marks and the Respondent had actual knowledge of the Complainant’s marks at the time of registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of Proceedings

Paragraph 11 of the Rules provides that: “(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain names is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) the disputed domain names consist of Latin letters, rather than Chinese characters;
(ii) the disputed domain names resolve to websites in the English language;
(iii) the Complainant is not familiar with the Chinese language;
(iv) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and

(v) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Consolidation of Proceedings

A preliminary issue raised by the Complainant relates to the consolidation of three domain names in the same complaint against a single respondent. Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. In this case, since the Respondent is the same for all the disputed domain names, consolidation is not an issue.

6.3. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a complainant to show that a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belongs to its respective owner. The Complainant has provided evidence that it owns the GRAINGER trademarks.

The differences between the disputed domain names and the Complainant’s GRAINGER marks are: for <drainger.com>, the replacement of the first letter “g” in the Complainant’s GRAINGER mark with the letter “d” followed by the gTLD “.com” wherein the Complainant asserts that letter “d” was intentionally selected as a likely mistype because it is one key away from the letter “g” on the standard “qwerty” keyboard; for <graqinger.com>, the addition of the letter “q” in the middle of the Complainant’s GRAINGER mark between letters “a” and “i” followed by the gTLD “.com” wherein the Complainant asserts that the letter “q” was intentionally selected as a likely mistype because it is right next to the letter “a” on the standard “qwerty” keyboard; and for <hgrainger.com>, the addition of the letter “h” before the Complainant’s GRAINGER mark as it is next to the letter “g” on the standard “qwerty” keyboard followed by the gTLD “.com”.

It is established that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. An example of such typos is adjacent keyboard letters (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9).

It is also established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (WIPO Overview 3.0, section 1.11). The addition of a TLD to a disputed domain name does not avoid a finding of confusing similarity as the use of a TLD is technically required to operate a domain name (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’Oréal v Tina Smith, WIPO Case No. D2013-0820; Titoni AG v Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877).

The disputed domain names consist of misspellings of the Complainant’s GRAINGER mark and the gTLD “.com” which in the Panel’s view does not avoid a finding of confusing similarity with the Complainant’s trademark (see Schneider Electric S.A. v. Domain Whois Protect Service / Cyber Domain Services Pvt. Ltd., WIPO Case No. D2015-2333; WIPO Overview 3.0, section 1.11).

Therefore, the Panel finds that the disputed domain names are confusingly similar to the GRAINGER marks and the element under paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the complainant to show that the respondent has no rights or interests in respect of the domain name. Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the domain name (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant submitted evidence that it did not authorize or license the Respondent to use the GRAINGER marks (see OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149; Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also submitted that the Respondent’s use of the disputed domain names contain PPC links, one of which is a link consisting of the Complainant’s GRAINGER mark which redirects to other advertising webpages that contain PPC or affiliate links, including links to competitive websites which sell bearings and seals that compete with the products sold by the Complainant under its GRAINGER mark, and links to the Complainant’s own website. It is well established that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). In this case, the Panel finds that the Respondent is indeed not making a bona fide offering of goods or services as the links on the websites at the disputed domain names are competitive with the Complainant and would also mislead unsuspecting Internet users seeking the Complainant.

In addition, the evidence submitted by the Complainant shows that the Respondent is not commonly known by the disputed domain names.

The Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names which is sufficient to rebut the Complainant’s prima facie case.

The Panel is therefore of the view that the Respondent has no rights or legitimate interests in respect of the disputed domain names and accordingly, paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

The complainant must show that the respondent registered and is using the disputed domain name in bad faith (paragraph 4(a)(iii) of the Policy). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence that the disputed domain names resolve to active webpages containing PPC links to competing websites. It is well established that “the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. Panels have also found that redirecting a domain name to the complainant’s (or a competitor’s) website and absence of any conceivable good faith use can support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark. It is also well established that “a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant”. (See WIPO Overview 3.0, section 3.1.4).

The Complainant also argues that it has been using the GRAINGER marks since as early as 1928 and it has owned trademark registrations in China, where the Respondent is purportedly located, since 1997, which is a long time before the Respondent’s registration of the disputed domain names. The Complainant states that the Respondent was clearly aware of the Complainant and its GRAINGER marks because the disputed domain names are virtually identical to its marks and that the Respondent has no connection to the GRAINGER marks. The Complainant further states that the disputed domain names also have active mail exchanger (“MX”) records which indicate that they may be used for email possibly for phishing or fraud purposes. The use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith (see The Depository Trust & Clearing Corporation v. Guillaume, Guillaume Kuffler, WIPO Case No. D2020-0663; WIPO Overview 3.0, paragraph 3.1.4).

In addition to the above, the Complainant submitted evidence of seven other UDRP decisions against the Respondent which involved instances of the Respondent registering and using domain names incorporating famous of well-known marks which the Panel has taken into consideration.

The Respondent did not submit a Response in this proceeding which is a further indication of the Respondent’s bad faith, which has been considered by the Panel.

The Complainant submitted evidence that they had issued cease-and-desist letters to the Respondent through the Registrar prior to the proceeding for each disputed domain name as the Respondent’s contact information had been redacted for privacy. The Complainant never received a response from the Respondent.

Based on the totality of evidence presented to the Panel, including the confusing similarity between the disputed domain names and the Complainant’s marks, the distinctive nature of the Complainant’s marks, the fact that the disputed domain names are being used for PPC links that are redirected to the websites of competitors and the Complainant, the possibility of the disputed domain names being used for phishing or fraud purposes and the fact that no Response was submitted by the Respondent in response to the Complainant’s cease-and-desist letters and to the Complaint, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith, and accordingly, paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <drainger.com>, <graqinger.com>, and <hgrainger.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: September 17, 2021