Lincoln Global, Inc., and the Lincoln Electric Company v Bergeron Richard

WIPO Case No. D2025-1611

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lincoln Global, Inc., and The Lincoln Electric Company v. Bergeron Richard

Case No. D2025-1611

1. The Parties

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

Respondent is Bergeron Richard, U.S.

2. The Domain Name and Registrar

The disputed domain name <lincolnelectricweldingsupplies.shop> is registered with PDR Ltd. d/b/a

PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2025. connection with the disputed domain name. On April 25, 2025, 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 (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and contact information in the Complaint. The Center sent an email communication to Complainants on April 28, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on April 30, 2025.

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 Respondent of the Complaint, and the proceedings commenced on May 2, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2025.

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The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on May 30, 2025. 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

Complainants are sister companies under a common holding company. Together they comprise a large and international leading provider of brazing and soldering equipment, among other things.

Complainants each own numerous registrations for the LINCOLN ELECTRIC marks, for example, U.S.
Registration No. 2350082, registered in Class 9 on May 16, 2000; U.S. Registration No. 2420805, registered
in Class 35 on January 16, 2001; and, European Union Trade Mark No. 004725941 registered in Classes 6,
9, and 35 on November 27, 2006.

The disputed domain name was registered August 15, 2024 and has at times resolved to a website that appears to offer for sale Complainants’ welding products.

5. Parties’ Contentions

A. Complainants

Complainants aver that Lincoln Electric was founded in 1895. Today, Complainants aver, Lincoln operates 71 manufacturing and automation system integration locations across 21 countries, maintaining a worldwide network of distributors and sales offices in over 160 countries.

Despite using a disputed domain name that fully incorporates Complainants’ LINCOLN ELECTRIC trademarks, Complainants allege that Respondent is using the domain name to route to a website offering Complainants’ products as well as those of Complainants’ competitors without disclosing that it is not affiliated with Complainants.

Complainants aver that they sent multiple cease and desist letters to Respondent, to which responses were
never received. The Complaint originally named a privacy service (Privacy Protect, LLC) as Respondent.
Following the disclosure of Respondent’s actual identity, Complainants note, it became apparent that
Respondent has been subject to multiple prior UDRP proceedings in which transfer was ordered.

Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

Procedural Issue: Multiple Complainants

Complainants filed a single Complaint together in this proceeding. The Panel notes that paragraph 10(e) of the UDRP Rules permits panels to consolidate multiple domain name disputes into a single proceeding.

It is common practice for the panel in such instances to look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to

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permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition, (“WIPO Overview 3.0”), section 4.11.1.

The Panel is aware that each of the individual Complainants possesses registrations for the LINCOLN ELECTRIC trademarks. Based on the allegations of the Complaint, it is clear that both Complainants are similarly affected by Respondent’s use of the disputed domain name, which, as found below by the Panel, is confusingly similar to both Complainants’ registered trademarks. In light of this, the Panel finds that it would be equitable and procedurally efficient to permit this proceeding filed by multiple, related Complainants to go forward with both Complainants in a single proceeding.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Complainants have shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “weldingsupplies”) may bear on assessment of the second and
third elements, the Panel finds that the addition of such terms does not prevent a finding of confusing
similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

The Panel finds that the first element of paragraph 4(a) of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel notes that evidence shows that Respondent has used the disputed domain name for a website commercially offering Complainants’ products without any statement of non-affiliation with Complainants, the trademark holders. Review of the website to which the disputed domain name routes confirms that Respondent has also used the confusingly similar disputed domain name to sell products of Complainants’ competitor.

Having reviewed the available record, the Panel finds that Complainants have established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainants’ prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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Panels have held that the use of a domain name for illegitimate activity (here, passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds that the second element of paragraph 4(a) of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that Respondent used the disputed domain name to offer products of Complainant (and those of a competitor) using the confusingly similar disputed domain name. The Panel finds that Respondent clearly targeted Complainant’s well-established trademarks and reputation and sought

to capitalize on consumer confusion, a clear instance of bad faith under Policy paragraph 4(b)(iv).

Multiple prior UDRP panels have ordered transfer in proceedings against Respondent, another clear
indication of bad faith under Policy paragraph 4(b)(ii)(pattern of bad conduct). Marucci Sports, LLC v.
Bergeron Richard, WIPO Case No. D2025-0104; Obagi Holdings Company Limited v. Bergeron Richard,
WIPO Case No. D2024-4261; Dansko, LLC v. Bergeron Richard, WIPO Case No. D2024-3667.

Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that Complainants have established the third element of paragraph 4(a) of the Policy.

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 <lincolnelectricweldingsupplies.shop> be transferred to Complainants.

/Jeffrey D. Steinhardt/
Jeffrey D. Steinhardt
Sole Panelist
Date: June 13, 2025