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W.W. Grainger, Inc. v. Venta, Leonard Bogucki [2004] GENDND 754 (14 June 2004)

1. The Parties

The Complainant is W.W. Grainger, Inc., Lake Forest, Illinois, Unites States of America.

The Respondent is Venta, Leonard Bogucki, Krakow, Poland.

2. The Domain Name and Registrar

The disputed domain name <graingers.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2004 (with hardcopy received on May 6, 2004). On April 28, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. eNom, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 May 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2004.

The Center appointed Mark Min-Jen Yang as the Sole Panelist in this matter on June 1, 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 Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of the Respondent’s default in responding to the Complaint).

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of the Respondent’s response.

4. Factual Background

The Respondent registered the domain name <graingers.com>.

In the Complaint (paragraphs under Section V, and the associated Annexes), the Complainant submitted evidence and contentions of various factual and legal conclusions based on such evidence.

Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. The Panel’s position on some contentions is amplified below (in Discussion and Findings).

In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts much (but not necessarily all) of the submitted evidence and the contended factual and legal conclusions as proven by such evidence, as set out in the Complaint. The Panel does accept enough of the Complainant’s evidence and contentions, to render its decision below.

For decades, the Complainant has used the trademark GRAINGER (herein, “GRAINGER Trademark”) in connection with its services of “distributorship and catalogue services in the field of commercial, janitorial and industrial equipment and supplies” (herein, “GRAINGER Services”). The Complainant owns several registrations for the GRAINGER Trademark in the USA and Poland (listed in the Complaint and Annex 3 thereof) in association with GRAINGER Services.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name, <graingers.com>, is identical or confusingly similar to the GRAINGER Trademark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in the domain name <graingers.com>, and that the domain name <graingers.com> is registered and is being used in bad faith by the Respondent. The Complainant requests the transfer to it of the domain name <graingers.com>.

B. Respondent

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

6. Discussion and Findings

One requirement of fundamental due process is that a Respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a Respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a response to the Complaint is not due to any omission by the Center. There is sufficient evidence, in the case file provided by the Center, for the Panel to conclude that the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).

Where there is default, under Rule 14(a), “the Panel shall proceed to a decision on the complaint,” and under the Rule 14(b), “the Panel shall draw such inferences [from the default] as it considers appropriate.” Furthermore, Rule 15(a) provides 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 appropriate.” Since the Respondent has not submitted any material and has not contested the contentions made by the Complainant, the Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant.

Paragraph 4(a) of the Policy sets forth three elements to be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration, and to obtain relief. Each of the following three elements must be established by Complainant:

(a) Respondent’s domain name <graingers.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) Respondent has no rights or legitimate interests in respect of the domain name <graingers.com>; and

(c) Respondent’s domain name <graingers.com> has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the uncontroverted evidence submitted by the Complainant and the facts and conclusions contended for (see Factual Background, above), the Panel finds that:

(a) the Complainant has generated billions of dollars of revenue for sales of the GRAINGER Services in association with the GRAINGER Trademark.

(b) the Complainant operates its website “www.grainger.com”; and

(c) the GRAINGER Trademarks, in association with the GRAINGER Services are the subject of trademark registrations in the United States of America (where the Complainant is domiciled) and in Poland (where the Respondent is apparently domiciled).

The Panel finds that the Complainant has significant rights in its GRAINGER Trademark in the United States of America and Poland, in association with the GRAINGER Services.

The Panel finds that the difference between the GRAINGER Trademark and the domain name <graingers.com> is of insufficient legal significance to distinguish the latter from the former. The addition of the letter “s” to the GRAINGER Trademark in the domain name <graingers.com>,is a transparent attempt to confuse.

Accordingly, the Panel finds that the domain name <graingers.com> is confusingly similar to the GRAINGER Trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Respondent has submitted no evidence, generally, and none under paragraph 4(c) of the Policy in particular, to support a finding of it having any rights or legitimate interests in respect of the domain name <graingers.com>. This is sufficient for the Panel to accept the Complainant’s contention that the Respondent has no rights or legitimate interest.

Furthermore, based on the uncontroverted evidence submitted by the Complainant and the factual and legal conclusions contended for (see Factual Background, above), the Panel accepts, in large measure, the evidence and contentions of factual and legal conclusions set out in the Complaint. In particular, the Panel finds that (a), (b) and (c) under A above, were likely known by the Respondent when it registered the domain name <graingers.com> and that makes it very difficult, even if it had submitted evidence, for it to show that it had rights or legitimate interests in the domain name <graingers.com>.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <graingers.com>.

C. Registered and Used in Bad Faith

Based on the uncontroverted evidence submitted by the Complainant and the factual and legal conclusions contended for (see Factual Background, above), the Panel accepts in large measure, the evidence and contentions set out in the Complaint. In particular, the domain name <graingers.com> was registered in bad faith because it was done with knowledge of the Complainant’s use of the GRAINGER Trademark in association with its GRAINGER Services (see A and B above). Also in particular, the domain name <graingers.com> is being used in bad faith because (according to the Complaint) the use is to divert Internet traffic to commercial “shopping” and “gambling” websites unrelated to the Complainant.

The Panel finds that the domain name <graingers.com> has been registered and is being used in bad faith by the Respondent.

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 <graingers.com> be transferred to the Complainant W.W. Grainger, Inc.

Mark Min-Jen Yang
Sole Panelist

Dated: June 14, 2004