The Complainants are Lincoln Global, Inc. and The Lincoln Electric Company, United States of America (the “USA”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is 张伟 (Zhang Wei), China.
The disputed domain name <linclonelectric.com> (the “Domain Name”) is registered with DNSPod, Inc. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2021. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on July 7, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amended Complaint in English on July 8, 2021.
On July 7, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On July 8, 2021, the Complainants confirmed their request that English be the language of the administrative proceeding. The Respondent did not comment on the language of the administrative 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 of the Complaint in English and Chinese, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2021.
The Center appointed Karen Fong as the sole panelist in this matter on September 1, 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.
The Complainants which are part of the same group of companies (hereafter “the Complainant”), are headquartered in Cleveland, Ohio, USA. The Complainant was founded in 1895 by two brothers. It is now one of the global leaders in the design, development and manufacture of arc welding products, robotic arc welding systems, plasma and oxy-fuel cutting equipment, brazing and soldering of alloys. The Complainant has 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. In 2020, the Complainant had reported sales of over USD 2.6 billion.
The Complainant’s products and services are sold under the trade mark LINCOLN ELECTRIC. The Complainant has trade mark registrations for LINCOLN ELECTRIC in many jurisdictions including the following:
|
Trade Mark |
Territory |
Registration No |
Registration Date |
Class |
|
LINCOLN ELECTRIC |
China |
3175662 |
June 21, 2003 |
9 |
|
LINCOLN ELECTRIC |
China |
6720497 |
September 21, 2012 |
6 |
|
LINCOLN ELECTRIC |
USA |
2350082 |
May 16, 2000 |
9 |
|
LINCOLN ELECTRIC |
USA |
2420805 |
January 16, 2001 |
35 |
|
LINCOLN ELECTRIC |
USA |
3114157 |
July 11, 2006 |
6 |
(hereafter referred to individually and collectively as the “Trade Mark”).
The Complainant owns over 700 domain names which incorporate the Trade Mark. Its official website is at the domain name <lincolnelectric.com>. It also has a strong social media presence.
The Domain Name was registered on December 23, 2019. The Domain Name resolves to a website which has pay-per-click links to third party websites some of which compete with the Complainant’s business (the “Website”).
The Complainant has provided evidence indicating that the Respondent owns a large number of domain names which are misspellings of well-known brands including <abercrombei.com> (ABERCROMBIE), <birkemstock.com> (BIRKENSTOCK), <hugobss.com> (HUGO BOSS), <morrganstanley.com> (MORGAN STANLEY) and <wwwdisneynow.com> (DISNEY). The Respondent did not respond to any of the cease and desist letters sent by the Complainant.
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to trade marks or service marks in which
the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- the Complainant is unable to communicate in Chinese and translation of the Complaint would unfairly disadvantage and burden the Complainant and delay the proceedings and adjudication of the matter;
- such delay poses a continuing risk to the Complainant and unsuspecting competitors giving the use of the Domain Name by the Respondent;
- the Domain Name is in Latin characters;
- the words “lincoln electric” do not carry any specific meaning in the Chinese language;
- the Respondent failed to respond to the cease and desist letters sent by the Complainant through the Registrar or request that communications should be in Chinese; and
- in order to ensure fairness and maintain and inexpensive and expeditious avenue for resolving disputes.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
The Panel is satisfied that the Complainant has established that it has registered rights to the Trade Mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to establish if the domain name is identical or confusingly similar to the complainant’s trade mark. The trade mark would generally have to be recognizable within the domain name.
In this case the Domain Name consists of a misspelling of the Trade Mark by the inversion of the letters “o” and “l” in “lincoln”.
It is well established that domain names which consist of a common, obvious, or intentional misspelling of a trade mark is considered to be confusingly similar to the relevant mark for the purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark (See section 1.9.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). This is a typical typosquatting case as the Domain Name is clearly a misspelling of the Trade Mark.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the Top-Level Domain (“TLD”) irrespective of the particular TLD and the ordinary meaning ascribed to a particular TLD. It is viewed as a standard registration requirement.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that the Respondent is not referred to or commonly known by the Domain Name or the Trade Mark. It has not authorised the Respondent to use the Trade Mark in any way including as a domain name. The Website does not show any bona fide offering of goods or services. The Website is a pay-per-click site which redirect Internet users to third party commercial websites which are competitors of the Complainant. This does not confer any rights or legitimate interests. The Respondent is also not making any legitimate noncommercial or fair use of the Domain Name.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
To succeed under the Policy, the Complainant must show that the Domain Name has been registered and is being used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Name particularly since the Trade Mark has no other meaning other than its significance as a trade mark belonging to the Complainant and the Domain Name is a clear misspelling of the Trade Mark.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
Further the use of the Domain Name is also in bad faith. Firstly, there is a presumption of bad faith in the registration and use of a domain name in typosquatting cases. As stated in TPI Holdings, Inc. v. LaPorte Holdings, WIPO Case No. D2006-0235, typosquatting – intentionally adding or deleting a letter or two, or transposing letters in, a valid mark of another in one’s domain name – is presumptive evidence of bad faith in registration and use of a disputed domain name.
The Respondent’s use of the Website also supports a finding that the Domain Name is being used in bad faith. The Website is a pay-per-click site which has been set up to the commercial benefit of the Respondent and which directs Internet users to competitors of the Complainant. It is highly likely that web users when typing the Domain Name into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.
The Domain Name is likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the misspelling of the Trade Mark in the Domain Name, with a clear intention on the part of the Respondent to attract for commercial gain by confusing and misleading Internet users into believing that the Website is authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy.
In addition to the above, the Respondent has a record of registering domain names which correspond to the marks of third party brand owners as outlined above. The above is an indication that it is engaged in a pattern of bad faith conduct (section 3.1.2 of WIPO Overview 3.0).
The Panel therefore concludes that the Domain Name was registered and is being 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 <linclonelectric.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: October 4, 2021