wwgranger.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

W.W. Grainger, Inc. v. wwgranger/Administrator Domain

Case No. D2004-0762

1. The Parties

The Complainant is W.W. Grainger, Inc., Lake Forest, Illinois, United States of America, represented by Aimee M. Nolan, United States of America.

The Respondent is wwgranger/Administrator Domain, George Town Grand Cayman, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <wwgranger.com> is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2004. On September 22, 2004, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On September 23, 2004, Address Creation transmitted by email to the Center its verification response confirming that the Respondent as listed is the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on September 29, 2004, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 30, 2004. The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 20, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2004.

The Center appointed The Honorable Neil Anthony Brown QC as the sole panelist in this matter on November 22, 2004. 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 language of the proceeding is English.

4. Factual Background

The Complainant, W.W. Grainger, Inc. (“ Grainger”) is a large company incorporated in the United States of America. Its business is in the field of supplying products to other businesses to maintain, repair and operate their facilities. Grainger has been in business since 1928, operates in the USA and other countries and, to promote and protect its interests, it owns the registered trademark GRAINGER in the USA and other countries. The trademark was first used in 1928.

It also owns other trademarks and service marks in the name GRAINGER details of which are set out in detail in Annex 3 to the Complaint.

The marks are primarily registered in International class 35 covering distributor and catalogue services in the field of commercial, janitorial and industrial equipment and supplies.

Not surprisingly, Grainger also conducts its business through an Internet website, which has the domain name <grainger.com>. The Panel notes in this regard that some of the trademarks and service marks cover access by electronic means to the Complainant’s catalogue. Accordingly, the access that the Complainant’s customers and potential customers have to the Internet via this website must be of particular importance to the Complainant in the conduct of its business.

It is the registration by the Respondent of the domain name <wwgranger.com> that has concerned the Complainant and given rise to this dispute. Grainger would like to have it resolved by having the contentious name transferred to itself.

5. Parties’ Contentions

A. Complainant

Complainant has been in business under its own name since 1928 and is now the leading United States operator in its field with sales in 2003 of over $4.6 billion. Complainant draws attention to the fact that it operates under the name “Grainger” globally, has numerous registered trademarks in its own name throughout the world and that it operates its business in part through the Internet, using a domain name that is quite plainly its own company name.

This last fact is important is several respects, particularly as the company’s Internet site can be and no doubt is used as a means of ordering and paying for the company’s products. Indeed, Complainant maintains an extensive catalogue on the Internet site.

All of this, Grainger contends, shows that its name is important to the success of its business so far and its success in the future.

Grainger then says that the Respondent has in effect taken its name, changed the spelling slightly and then improperly used it as a domain name to mislead people and to trade off Grainger’s good name for its own benefit. In that regard, it draws attention to the fact that when the contentious domain name is used, it produces several pop-up windows revealing search results for shopping websites and then leading to the sites themselves. It is therefore a site established not to promote a particular business or service, but one that has been established to earn money by enticing people into shopping sites and to do so by using the device of taking a well-known trading name and slightly changing its spelling.

Grainger says that this interpretation is supported by the fact that there is no business or entity in the Cayman Island that has the name Granger, that the Respondent has no proprietorial rights in that name and that it regularly engages in this practice of taking well-known company names and registering them as domain names.

Bringing all of this together, Grainger says that it is a clear breach of the Policy and that the facts show that the contested name is virtually identical with its own trademark and certainly confusingly similar to it, that the Respondent has no rights or legitimate interests in the name and that the name has clearly been registered and used in bad faith.

Accordingly, Complainant requests that in accordance with paragraph 4(b)(i) of the Policy the Panel issue an order transferring the domain name to Complainant. The Panel is not sure why the Complainant asks for that order under paragraph 4(b)(i) of the Policy, as paragraph 4(b)(i) relates only to evidence and conclusions that can be drawn from circumstances and it gives no power to order a transfer.

The power to order a transfer comes from paragraph 3 of the Policy and may be invoked if a decision is made by an Administrative Panel requiring such action.

The Panel presumes that the Complainant is invoking that power and calling in aid paragraph 4(i) of the Policy, which limits the remedies to cancellation or transfer, rather than paragraph 4(b)(i).

The Panel will proceed on that basis.

B. Respondent

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

6 Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In that regard, the Panel should also note that the fact that the Respondent has not put in a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past UDRP panels have said many times that despite the absence of a submission from a Respondent, Complainant must nevertheless show all three elements of the Policy before any order can be made to transfer a domain name. However, as the Panel shall illustrate later, it is of course possible to draw inferences both from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.

The Panel therefore turns to discuss the various issues that arise for decision on the facts as we know them.

For the Complainant to succeed it must prove, within the meaning of paragraph 4 (a) of the Policy that:

A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

B. The Respondent has no rights or legitimate interests in respect of the domain name; and

C. The domain name has been registered and is being used in bad faith.

It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present.

The Panel will therefore deal with each of these requirements in turn.

A. Identical or Confusingly Similar

The Panel finds that the domain name <wwgranger.com> is confusingly similar to the Complainant’s trademark GRAINGER. This is so because, first, the word ‘grainger’ is, as a matter of fact, similar to the word ‘granger’ and is virtually identical to it. Secondly, the Respondent has taken as the domain name a common misspelling of Grainger, which creates confusing similarity by itself. Thirdly, the domain name is visually similar to the trademark, apart from the prefix ‘ww’ which the Panel will refer to shortly. But even with that prefix, the substance of the two words Grainger and granger is visually the same and confusingly so. Fourthly, the domain name is phonetically identical to the trademark and therefore confusingly similar to it.

It might be said, against the view the Panel has just expressed, that the domain name and the trademark cannot be confusingly similar, as the domain name is preceded by the two additional letters ‘ww’, thereby creating an entirely different word from ‘grainger’.

The Panel does not accept that argument. In fact, the addition of those letters makes the domain name and the trademarks more confusingly similar. This is so because the Complainant’s incorporated name is W.W.Grainger, Inc. and it must be assumed to be widely known by that name. Thus, what the Respondent has done is to take the Complainant’s entire name and use it as a domain name. It may not have literally adopted the actual trademark, but what it has done is to create a greater confusion with the trademark by using the company name.

In other words, it gives the false impression that the domain name <wwgranger.com> must be the domain name of the company W.W.Grainger.

Moreover, because of the similarity between ‘ww’ and ‘www’, the use by the Respondent of the company’s first two initials together with its name, probably reinforces the impression in the minds of some users that <wwgranger.com> is the actual website address of W.W. Grainger Inc.

The conclusion the Panel has reached on this issue is supported by and is consistent with decisions of other Administrative Panels that have been faced with similar issues. Thus in Yahoo! Inc. v. Eitan Zviely et al, WIPO Case No. D2000-0273, it was decided that a series of domain names, such as Jahu, Jaghoo and Yahjoo were confusingly similar to the ‘Yahoo!’ mark, despite the slight alterations that had been made to the spelling of the word ‘Yahoo!’

Likewise, in Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323, the minor change from ‘Neuberger’ in the mark and the company name to ‘Newberger’ in the domain name did not prevent the latter from being confusingly similar to the former, which it clearly was.

Again, in Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869, it was held that the mere deletion of the second ‘e’ and the accent aigue from the trademark, when the domain name was created,did not prevent the domain name from being confusingly similar to the trademark, which it clearly and intentionally was.

Similarly, in Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273, the Respondent had contrived to add an ‘e’ at the end of the name of the trademark ‘Pharmacia’, but the Administrative Panel had no difficulty in deciding that the domain name thus resulting from this minor change was nevertheless confusingly similar to the trademark.

Briefing .com Inc. v. Cost Net Domain Manager,WIPO Case No. D2001-0970, is particularly relevant, as it is a case where those responsible for devising the domain name took a common misspelling of the Complainant’s trademark, namely ‘ breifing’ for ‘ briefing’ and adopted the former as the domain name. However, the Administrative Panel held that that name was still confusingly similar to the trademark, despite the minor change in the spelling and that it was intentionally so. That is a similar situation to the present case, where a common alternative spelling to the name in the trademark and the company’s own name has been adopted as the domain name and where the very alteration itself is largely responsible for the confusion arising from these similar names.

Finally and again with relevance to the present case, in Dell Inc.v. Pateh Mbowe, WIPO Case No. D2004-0689, the Respondent had taken the name of the company Dell Inc. and the many DELL trademarks of the prominent computer company and had added to them the word ‘technologies’, to create the offending domain name. The Administrative Panel said in its decision that:

‘…the addition of the word “ technologies” to the DELL trademark does not lessen confusion, it only increases it.’

Likewise, in the present case, it is the addition by the domain name holder of the initials ‘ww’ to the mispelt name that actually increases the confusion. It is virtually an admission that it has purloined the Complainant’s own company name and is trying to create the confusing belief in the minds of users that <wwgranger.com> is the domain name of W. W. Grainger, Inc, which it is not.

For all of these reasons, the Panel has no hesitation in deciding that the domain name is confusingly similar to the Complainant’s trademark.

B Rights or Legitimate Interests

It is apparent from the wording of paragraph 4 of the Policy that the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name.

In the Panel’s opinion, the starting point for considering this element must be the intention and the substance of what the Respondent is actually doing. Respondent is using the site to which users are directed, but in an illegitimate way. The illegitimate way in which it is using the domain name and the site is by actively misleading potential customers of W.W.Grainger, Inc. about the ownership and true nature of the site, by diverting them away from the Complainant’s own website and into the contentious site, where it is hoped that the Respondent will by one means or another make money out of them.

As the Panel has already concluded above, it is doing this by slightly changing the spelling of Grainger, so that if a user is seeking the W. W. Grainger company, makes a mistake and types “wwgranger”, he or she will be lured directly into the Respondent’s site and be actively mislead by being told that what is being presented to the user are ‘Search results for: wwgranger’. This is literally true, of course, but in reality it is a false representation, for the user believes that he or she is in the site of the Grainger company.

But the Respondent has gone further in promoting this deception by adding the very two letters which are at the beginning of the Complainant company’s name, so that the domain name looks more like the company’s trading name than it would have looked without them. The Respondent has also promoted the deception by adding those two letters, the ‘ww’, so as to give the impression not only that the domain name is the Complainant company’s name, but that the whole name so formed is an Internet address.

Clearly, this must have been done intentionally and it is impossible to accept that any of it was accidental. Accordingly, the Panel holds that the changing of the spelling of the Grainger name is a colourable device and subterfuge, created to entice the user into the Respondent’s website for the purposes of making money.

One reason why this is so is that there is no rational explanation for it having been done for any reason other than the obvious one of ensnaring users who have made a typing mistake.

If there were any more innocent or legitimate explanation for its conduct of the Respondent, Respondent could have provided one, but it has not done so. In the absence of such an explanation, as the Administrative Panel observed in the Pharmacia Case (supra), the Panel is entitled to draw inferences adverse to the Respondent’s interests on that issue and to assume that ‘any evidence of the Respondent would not have been in his favour.’

The Respondent’s conduct is also illegitimate in an additional respect. If a user, having been lured into the Respondent’s website, concluded that the offerings of weight loss treatments, attorneys, pet grooming services and suchlike that are displayed for his selection, did not include the items he wanted to buy from Grainger, he might decide to correct his mistake by typing into the search engine of the site the words ‘W.W. Grainger products’, this time spelling the name correctly.

However, that produces nothing but a return visit to the Respondent’s site, and the same array of unwanted services and products as were there before. The difference, however, this time, is that they are described as ‘Search results for: W. W Grainger’s products’, which of course none of them are. The only conclusion that can be reached from that process is that not only does the Respondent lure users into its website, but it will engage in a sustained and persistent subterfuge and deception to keep them there.

Accordingly, when the substance of the Respondent’s activities are illegitimate in the manner the Panel has described, it is really impossible to conclude that it has any rights or legitimate interests in the domain name.

This conclusion is reinforced by the argument of the Complainant and the evidence it has adduced to the effect that there is no business or entity in the Cayman Islands with the name Granger. If that is so and the Panel accepts that it is, then neither the Respondent nor anyone else can have any rights or legitimate interests in the domain name.

The Complainant has also adduced evidence that the Respondent does not appear to own any trademark registrations or have any rights in the mark GRANGER. If that is so and the Panel accepts that it is, it makes it even less likely that the Respondent has a legitimate business that can explain why it has the domain name.

For completeness, the Panel should add that although the Respondent has not tried to bring itself within any of the sub-paragraphs of paragraph 4(c) of the Policy because it has made no submission at all, in the Panel’s opinion it could not bring itself within any of those sub-paragraphs on the evidence as it is. Its use of the domain name was not in connection with a bona fide offering of goods or services but only in connection with a wholly illegitimate offering, it has never been commonly known by the domain name and it has not been making a legitimate noncommercial or fair use of the domain name. Accordingly, it cannot be shown by reference to any of the tests set out in the Policy that the Respondent has any rights or legitimate interests in the domain name.

In this regard, the Panel should say that in the decision in The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305, the Administrative Panel dealt with the consequences of a finding adverse to the holder of the domain name on the tests in each of the sub-paragraphs of paragraph 4(c) of the Policy.

In that decision, the Panel said: ‘It has become accepted by more and more prior panels, that in the absence of any Response, once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interest or rights apply, the burden of proof on this element shifts to the Respondent to rebut the showing. (See, Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270; Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413, The Sportsman’s Guide, Inc.v. Vipercom,WIPO Case No. D2003–0145).

Silence of the Respondent might be an indication that he has no rights or legitimate interests in respect of the disputed domain name, as many prior UDRP panels have accepted (See, Edgar Rice Burroughs, Inc. v. Adtel Communications, WIPO Case No. D2000-0115, Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641; Bayerische Motoren Werke AG v. Null, WIPO Case No. D2002-0937).

In the present case, the Complainant has established a prima facie case that none of the three circumstances set out in paragraph 4(c), establishing legitimate interest or rights, has been made out. Accordingly, as there has been no argument addressed by the Respondent to rebut that prima facie case, the finding should be a positive one that the Respondent has no rights or legitimate interests in the domain name.

For all of these reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

With respect to this third element, the Policy is more detailed and sets out some criteria to which regard must be given in determining whether the domain name ‘has been registered and is being used in bad faith’.

Paragraph 4(b) sets out several alternative circumstances, any one of which, if found to be present, is evidence of the registration and use of a domain name in bad faith. However, the sub-paragraph makes it plain that regard may also be had to circumstances other than those specified in the course of answering the question.

There is no evidence that this case comes within the criteria set out in paragraph 4(b)(i), namely intending to sell the name to another party and, indeed, the Complainant does not rely on that ground. Nor is this case really one that falls within paragraph 4(b)(ii), namely where the intention is to prevent the trade or service mark owner using its mark in ‘a corresponding domain name’ and, again, the Complainant has not indicated that it relies on that sub-paragraph. Nor is this a case under paragraph 4(b)(iii), except in the most peripheral sense, where the primary purpose of registering the domain name is ‘disrupting the business of a competitor’, for the Respondent could scarcely be said to be a competitor of the Complainant, although it clearly wishes to cause disruption.

Rather, this is a case coming under paragraph 4(b)(iv), where, in summary, there is an intention to attract users to a website or other location by creating confusion about the nature of the site or the products and services on it and to do so for commercial gain.

Although the Complainant does not spell it out in these words, it is clear to the Panel that the circumstance described in paragraph 4(b)(iv) is exactly what the Respondent has done and that the Respondent is therefore in breach of that sub-paragraph.

As the Panel has already explained, the Respondent clearly had the intention of attracting users to its website and also to other locations being the companies that in effect advertise on it.

It has done this by creating confusion with the Complainant’s trade and service marks by a spelling variation.

The confusion it has created is confusion as to whether the products and services promoted on its website are sourced from, sponsored by, affiliated with and endorsed by the Complainant. It virtually asserts that they are, when in fact they are not.

Finally, unless this is all being done as an act of charity, there is no conclusion that can be reached other than that it is being done for ‘commercial gain’, which the Panel finds that it is.

In support of its case, the Complainant exhibits in Annex 8 to its Complaint some screen prints from the Respondent’s website and the Panel accepts that they show that entering the Respondent’s site leads to search results for shopping sites and then to the sites themselves. That is further evidence of the confusion that is intended to be caused and which is evidence, by definition, of bad faith within the meaning of paragraph 4(b)(iv).

The Complainant goes further than the definition of bad faith set out in paragraph 4(b) and relies in effect on a wider form of bad faith which of course the definition permits to be used. Thus, it is said that ‘…the Respondent has engaged in a pattern of registering domain names that incorporate famous or well-known trademarks or company names.’ This is not mere assertion, for the Complainant has adduced in Annex 7 to its Complaint evidence of several registrations, many of which contain lamentable errors of spelling and punctuation. The Respondent and its associates are the owner, for example, of domain names including the terms “jack-daniel”, rather than Jack Daniel’s, “adobereader” rather than Adobe Reader, “exxon-mobile” rather than ExxonMobil, “deloitetouche” rather than Deloitte Touche and “harleydavison” rather than Harley-Davidson. One or two such errors might be attributed to carelessness, but so many have occurred in fact that they begin to look like deliberately misleading conduct. This can only be described as acting in bad faith.

Not surprisingly, some of the reputable companies whose names have been taken in vain in this way have reacted to defend their interests. The Complainant has given in Annex 6 to its Complaint some details of actual cases resulting from Complaints filed against the Respondent and its associates over conduct similar to its conduct in the present case.

Some of them are WIPO Arbitration and Mediation Center UDRP proceedings and some are National Arbitration Forum UDRP proceedings. An example of the former is The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305,where the respondent, clearly associated with the current Respondent, had taken the complainant’s trademark, The Sportsman’s Guide, changed the spelling slightly and created the domain name <sportmenguide.com>, which the Panel held was a breach of the Policy on the same grounds as exist in the present case.

An example of the latter is Shinders, Inc v. Modern Limited – Cayman WebDevelopment, NAF Case No. 218903, where the respondent, clearly associated with the current Respondent, had used the entirety of the trademark, it being held that there were similar breaches of the Policy as there are in the present case.

For present purposes, the existence of these actual cases, the extensive examination of the facts on which they were based, the fact that they are included in the Complainant’s material which the Respondent has had an opportunity to refute, an opportunity of which it has not availed itself and the judgments delivered in each of them, show a regular pattern of conduct which is both evidence of bad faith within paragraph 4(b)(iv) and evidence of general bad faith.

The conclusion the Panel has reached is consistent with the decisions of Administrative Panels in, amongst others, the cases the Panel has already referred to, namely Yahoo! v. Eitan Zviely, (supra), Neuberger Berman Inc. v. Alfred Jacobsen, (supra), Estée Lauder Inc. v. estelauder.com et al (supra), Pharmacia & Upjohn AB v. Dario H. Romero, (supra), Briefing .com inc v. Cost Net Domain Manager, (supra), and Dell Inc. v. Pateh Mbowe, (supra).

The Panel is therefore satisfied that the third element, registration and use in bad faith, has been established.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwgranger.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown, QC
Sole Panelist

Date: November 29, 2004