WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lincoln Global, Inc., The Lincoln Electric Company v. Registration Private, Domains by Proxy, LLC / W S, WIS INC

Case No. D2021-4380

1. The Parties

The Complainants are Lincoln Global, Inc. and The Lincoln Electric Company, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Registration Private, Domains by Proxy, LLC, United States / W S, WIS INC, Cayman Islands, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <lincolnelctric.com> 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 December 27, 2021. On December 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2022, 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 on January 13, 2022.

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 of the Complaint, and the proceedings commenced on January 19, 2022. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2022.

The Center appointed Frank Schoneveld as the sole panelist in this matter on February 22, 2022. 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 is the registered owner of the trademark LINCOLN ELECTRIC registered in each of the following jurisdictions with the corresponding registration number and registration date:

The Complainant’s domain name <lincolnelectric.com> was registered on February 24, 1996.

The disputed domain name <lincolnelctric.com> was registered on October 18, 2021 and resolves to a parking website containing links related to the Complainant´s activities.

5. Parties’ Contentions

A. Complainant

The Complainant is sister companies owned by Lincoln Electric Holdings Inc., and are the owners of various trademark registrations of the LINCOLN ELECTRIC mark including in the United States, the EU and Canada. The Complainant states that Lincoln Electric was founded in the United States in 1895 and now has 60 manufacturing locations with a worldwide network of distributors and sales offices covering more than 160 countries and employs over 11,000 employees worldwide with, in 2020, reported sales of over USD 2.6 billion. The Complainant submits that Lincoln Electric has a large Internet presence and is the owner of over 700 domain names which incorporate the LINCOLN ELECTRIC and other trademarks, including its primary domain name <lincolnelectric.com>. According to “Similarweb.com”, Lincoln Electric’s website at its primary domain name <lincolnelectric.com> has received over 490,000 visitors during the period November 2020 to April 2021, and is ranked 26,016 in the United States and 92,921 globally. The Complainant asserts that Lincoln Electric has a strong social media presence through the use of its Facebook, Twitter and Youtube pages with its Facebook page having over 1.02 million “likes” while its Twitter page has over 35,300 followers and its Youtube page has over 65,100 subscribers.

The Complainant contends that, by virtue of its trademark and service mark registrations in the United States, Canada and the European Union, the Complainant is the owner of a number of LINCOLN ELECTRIC trademarks, and that a complainant is not required to register its marks within the country of the respondent in order to protect its rights in those marks. The Complainant argues that it is standard practice when comparing a disputed domain name to the Complainant’s trademarks, to not take the extension into account, and that the disputed domain name is a purposeful misspelling of the Complainant’s LINCOLN ELECTRIC trademark and must be considered confusingly similar to the Complainant’s trademark. The Complainant points out that the disputed domain name varies from the Complainant’s LINCOLN ELECTRIC trademark by the omittance of merely one letter, in that the Respondent has removed the second letter “e” from ELECTRIC, arguing that as the disputed domain name differs from the Complainant’s trademark by just one letter, the disputed domain name must be considered a prototypical example of typosquatting – which intentionally takes advantage of internet users who inadvertently type an incorrect address – often a misspelling of the complainant’s trademark – when seeking to access the trademark owner’s website. The Complainant submits that this means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design.

The Complainant asserts that the disputed domain name must be considered confusingly similar to the Complainant’s LINCOLN ELECTRIC trademark in that, as written, the disputed domain name is visually similar to the Complainant’s trademark, and the disputed domain name is also phonetically similar to the Complainant’s trademark in terms of pronunciation, and that past panels have held that such a domain name is confusingly similar to the trademark which it closely resembles.

The Complainant contends that the granting of registrations to the Complainant by the USPTO, the EUIPO and the CIPO, for the LINCOLN ELECTRIC trademark is prima facie evidence of the validity of the term “lincoln electric” as a trademark, of the Complainant’s ownership of this trademark, and of the Complainant’s exclusive right to use the LINCOLN ELECTRIC trademark in commerce on or in connection with the goods and/or services specified in the registration certificates.

The Complainant asserts that:

- the Respondent is not sponsored by or affiliated with the Complainant in any way;
- the Complainant has not given the Respondent permission to use Complainant’s trademarks in any manner, including in domain names;
- the Respondent is not commonly known by the disputed domain name; and
- the Complainant has not licensed, authorized, or permitted the Respondent to register domain names incorporating the Complainant’s trademark.

The Complainant concludes from the above that, where no evidence, including in the WhoIs record for the disputed domain name, suggests that the Respondent is commonly known by the disputed domain name, then the Respondent cannot be regarded as having acquired rights to or legitimate interests in the disputed domain name within the meaning of Paragraph 4(c)(ii) of the Policy. The Complainant adds that, at the time of filing the Complaint, the Respondent was using a privacy WhoIs service, which (the Complainant argues) past panels have found to equate to a lack of legitimate interest.

The Complainant submits that the Respondent is using the disputed domain name to redirect Internet users to a website featuring a single link directly referencing the Complainant. When clicked, the Internet user is taken to a secondary page featuring additional links which compete directly with the Complainant’s business, giving as an example the website featuring third-party links for welding supplies, components and systems. The Complainant contends that, presumably, the Respondent receives pay-per-click fees from the linked websites that are listed at the disputed domain name’s website, and argues that prior UDRP decisions have consistently held that respondents that monetize domain names using pay-per-click links have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name, and as such, the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy paragraph 4(c)(iii).

The Complainant contends that the disputed domain name is being offered for sale in an amount that far exceeds the Respondent’s out-of-pocket expenses in registering the disputed domain name, and this serves as further evidence of the Respondent’s lack of rights and legitimate interests arguing that past panels have consistently upheld this view.

The Complainant notes that the Respondent registered the disputed domain name on October 18, 2021, which is (a) significantly after the Complainant filed for registration of its LINCOLN ELECTRIC trademark with the USPTO, EUIPO and CIPO, (b) significantly after the Complainant’s first use in commerce of its trademark (which the Complainant states is) in 1915, and (c) significantly after the Complainant’s registration of its <lincolnelectric.com> domain name on February 23, 1996. The Complainant says that it and its LINCOLN ELECTRIC trademark are known internationally, with trademark registrations across numerous countries, and that it has marketed and sold its goods and services using this trademark since 1915, which is well before the Respondent’s registration of the disputed domain name on October 18, 2021.

The Complainant contends that by registering a domain name that is a purposeful misspelling utilizing a one-letter typo of the Complainant’s LINCOLN ELECTRIC trademark, the Respondent has created a domain name that is confusingly similar to the Complainant’s trademark, as well as its <lincolnelectric.com> domain name, and thereby demonstrated a knowledge of and familiarity with the Complainant’s brand and business. The Complainant argues that the composition of the disputed domain name makes it illogical to believe that the Respondent registered it without specifically targeting the Complainant, and in light of the alleged facts set forth in the Complaint, it is not possible to conceive of a plausible situation in which the Respondent would have been unaware of the Complainant’s brands at the time the disputed domain name was registered.

The Complainant argues that its LINCOLN ELECTRIC mark is so closely linked and associated with the Complainant that the Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith since the disputed domain name is so obviously connected with such a well-known name and products as the Complainant’s, that its very use by someone with no connection with the products suggests opportunistic bad faith. The Complainant also contends that where the disputed domain name resolves to a pay-per-click site with links that reference the Complainant, it defies common sense to believe that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademarks.

The Complainant contends that, at the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks and that registration of domain names containing well-known trademarks constitutes bad faith per se, submitting that in addition to the numerous trademarks filed in connection with the Complainant’s business prior to the Respondent’s registration of the disputed domain name, the Complainant is the world leader in the design, development and manufacture of arc welding products, robotic arc welding systems, plasma and oxy-fuel cutting equipment and has a leading global position in the brazing and soldering alloys market with 60 manufacturing locations, including operations and joint ventures in 19 countries and a worldwide network of distributors and sales offices covering more than 160 countries, which demonstrates the Complainant’s fame. The Complainant contends that, performing searches across a number of internet search engines for “lincoln elctric” returns multiple links referencing the Complainant and its business.

The Complainant contends that typosquatting itself has been taken as evidence of bad faith registration and use by past panels. The Complainant argues that the disputed domain name is a slight misspelling of the Complainant’s LINCOLN ELECTRIC trademark, as well as its <lincolnelectric.com> domain name, and the Respondent is attempting to capitalize on typing errors committed by the Complainant’s customers in trying to locate the Complainant on the Internet, so that the disputed domain name is a typosquatted version of the Complainant’s LINCOLN ELECTRIC trademark and has intentionally been designed to closely mimic the Complainant’s trademark and primary domain. The Complainant asserts that numerous Panels have found that registering a domain name to take advantage of traffic generated by typing errors committed by another’s customers, as here, is evidence of bad faith registration and use pursuant to Policy paragraph 4(a)(iii).

The Complainant argues that ICANN Policy dictates that bad faith can be established by evidence demonstrating that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location.”, citing the Policy Paragraph 4(b)(iv). The Complainant argues that in this case, the Respondent creates a likelihood of confusion with the Complainant and its trademarks by registering a domain that differs from the Complainant’s trademark by just one letter, which demonstrates that the Respondent is using the disputed domain name to confuse unsuspecting Internet users looking for the Complainant’s services, and to mislead Internet users as to the source of the disputed domain name and website. The Complainant contends that by creating this likelihood of confusion between the Complainant’s trademarks and the disputed domain name, leading to misperceptions as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, the Respondent has demonstrated a nefarious intent to capitalize on the fame and goodwill of the Complainant’s trademarks in order to increase traffic to the disputed domain name’s website for the Respondent’s own pecuniary gain, as evidenced by the presence of multiple pay-per-click links posted to the Respondent’s website, which directly reference the Complainant. The Complainant asserts that previous panels have found bad faith under Policy paragraph 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent, and neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the Respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

The Complainant contends that (a) the disputed domain name can only be taken as intending to cause confusion among Internet users as to the source of the disputed domain name, and thus, the disputed domain name must be considered as having been registered and used in bad faith pursuant to Policy paragraph 4(b)(iv), with no good faith use possible, and (b) more specifically, where the disputed domain name so closely resembles the Complainant’s trademark and is linked to a pay-per-click site with references to the Complainant, there is no plausible good-faith reason or logic for the Respondent to have registered the disputed domain name, so that the only feasible explanation for the Respondent’s registration of the disputed domain name is that the Respondent intends to cause confusion, mistake and deception by means of the disputed domain name, and accordingly, any use of the disputed domain name could only be in bad faith.

The Complainant contends that the Respondent is currently offering to sell the disputed domain name, which constitutes bad faith under Policy paragraph 4(b)(i) because the Respondent has demonstrated an intent to sell, rent, or otherwise transfer the disputed domain name for valuable consideration in excess of his out-of-pocket expenses, and that it is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith.

The Complainant asserts that (a) the Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity, which past panels have held serves as further evidence of bad faith registration and use, and (b) the Respondent has ignored the Complainant’s attempts to resolve this dispute outside of this administrative proceeding and past panels have held that failure to respond to a cease-and-desist letter may properly be considered a factor in finding bad faith registration and use of a domain name.

Finally, the Complainant contends that, on balance of the facts alleged by the Complainant (as set forth above) it is more likely than not that the Respondent knew of and targeted the Complainant’s trademark, and the Respondent should be found to have registered and used the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4.a. of the Policy, in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements are present:

(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

The Rules at paragraph 15(a) require that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” In the absence of any rebuttal by the Respondent to the Complainant’s contentions, the Panel proceeds on the basis of the Complaint submitted by the Complainant, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.

A. Identical or Confusingly Similar

The Complainant provides evidence that its LINCOLN ELECTRIC trademark has been registered in the United States since May 2000, in Canada since January 2003, and in the European Union since July 2006. This evidence shows that the Complainant has had rights in the LINCOLN ELECTRIC trademark for more than twenty years before the disputed domain name was registered on October 18, 2021. The difference between the disputed domain name and the Complainant’s LINCOLN ELECTRIC registered trademark is only one letter, in that the letter ‘e’ is missing in the disputed domain name when it appears for the second time in the LINCOLN ELECTRIC trademark of the Complainant. It is clear then, that the disputed domain name contains more than a significant portion of the Complainant’s LINCOLN ELECTRIC trademark with only one letter difference. Further, it is reasonably clear that the disputed domain name is not only visually similar to the Complainant’s trademark, but it also appears to be phonetically similar to the Complainant’s trademark in terms of pronunciation. A domain name which consists of a common, obvious, or intentional misspelling of a trademark has generally been considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In the above circumstances, the Panel finds that the disputed domain name is confusingly similar to the trademark LINCOLN ELECTRIC in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that indicates the Respondent has any rights or legitimate interests in the disputed domain name. The Complainant makes it clear that the Respondent is not affiliated with the Complainant in any way and that the Complainant has not given permission to the Respondent to register or use any domain name incorporating the Complainant’s LINCOLN ELECTRIC trademark or to use it in business. It is also apparent from the evidence that (a) registration of the LINCOLN ELECTRIC trademark in the United States, Canada and the EU preceded by more than fourteen years, registration of the disputed domain name, and (b) there is no evidence the Respondent’s name bears any resemblance to the disputed domain name and there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.

Further, the evidence before the Panel indicates the Respondent is using the disputed domain name to redirect Internet users to a website with a link referencing the Complainant, and when clicked, the Internet users are taken to a page featuring additional links which compete directly with the Complainant’s business. The Complainant asserts that it can be assumed that the Respondent receives pay-per-click fees from these linked websites. In the absence of any rebuttal from the Respondent of this presumption, the Panel finds that it is more likely than not that the Respondent is obtaining some commercial gain from pay-per-click links and is not making a bona fide offering of goods or services that would give rise to rights or legitimate interests in the disputed domain name. On the contrary the evidence suggests that the Respondent is using the disputed domain name’s confusing similarity to the Complainant’s trademark to redirect Internet users to sites that compete with the Complainant’s business and to obtain some commercial gain in doing so. Such conduct would not support a claim to rights or legitimate interests in respect of the disputed domain name.

In the absence of any submission from the Respondent, a prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Given that (a) the disputed domain name includes the LINCOLN ELECTRIC trademark almost in its entirety with only the second letter ‘e’ being absent, (b) the trademark’s registration in United States, Canada and EU were made more than 14 years before registration of the disputed domain name, and (c) the ease with which the words ‘Lincoln Elctric’ might mistakenly be typed by an Internet user when searching for “Lincoln Electric”, resulting in many links to the Complainant’s website at <lincolnelectric.com> using any search engine and (d) the large number of visits to the Complainant’s website at <lincolnelectric.com>, it is likely that at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark LINCOLN ELECTRIC. With such knowledge, it is difficult to imagine (absent any submission from the Respondent) any reason to chose to incorporate all of the Complainant’s mark (except the second letter ‘e’) into the disputed domain name except in order to take advantage of the confusing similarity between the disputed domain name and the Complainant’s trademark to attract Internet users to the Respondent’s website. Such a conclusion is reinforced by use of the website to which the disputed domain name resolves having a link referencing the Complainant, and when clicked, the Internet user is taken to a page featuring additional links to competitors of the Complainant. Internet users would mistakenly believe that the source of the website to which the disputed domain name resolves, is the Complainant or that it is affiliated, endorsed or sponsored by the Complainant.

The Panel has already found, in the absence of any response from the Respondent, that it is more likely than not that the Respondent is obtaining some commercial gain from pay-per-click links at the website to which the disputed domain name resolves. In addition, the links at this website to competitors of the Complainant is a diversion of potential customers of the Complainant who could (and likely would) mistakenly believe that such competitors are endorsed or affiliated with the Complainant, leading potentially to losses by the Complainant.

It is apparent from the above, and the Panel concludes, that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website (to which the disputed domain name resolves) by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. There is therefore evidence of registration and use in bad faith of the disputed domain name within the meaning of the Policy Paragraph 4(b)(iv). In the absence of any submission by the Respondent, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 name <lincolnelctric.com> be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: March 9, 2022