Lincoln Global, Inc. and The Lincoln Electric Company v Joseph Lee

WIPO Case No. D2024-0810

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lincoln Global, Inc. and The Lincoln Electric Company v. Joseph Lee

Case No. D2024-0810

1. The Parties

Complainant is Lincoln Global, Inc. and The Lincoln Electric Company, United States of America (“United

States” or “US”), represented by CSC Digital Brand Services Group AB, Sweden.

Respondent is Joseph Lee, United States.

2. The Domain Name and Registrar

The disputed domain name <lincolnelecitric.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 22, to Complainant on February 26, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 28, 2024.

2024. On February 23, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On February 23, 2024, 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 (Redacted for Privacy, Privacy service provided by
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 February 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was March 20, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 21, 2024.

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The Center appointed Michael A. Albert as the sole panelist in this matter on March 27, 2024. 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 Lincoln Electric Company and Lincoln Global, Inc. (collectively known as “Lincoln Electric” or
“Complainant”) are sister companies owned by Lincoln Electric Holdings Inc., the owner of trademark

registrations across various jurisdictions including:

TRADEMARK	JURISDICTION/ TM	REGISTRATION	REGISTRATION	IC CLASS
OFFICE	NUMBER	DATE
LINCOLN ELECTRIC	European Union /	004725941	November 27,	6, 9, 35
European Union	2006
Intellectual Property Office
LINCOLN ELECTRIC	European Union /	015346935	August 31, 2016	1,7,8
European Union Intellectual Property Office
LINCOLN ELECTRIC	European Union /	004982468	January 15, 2008	6, 7, 9, 35
European Union Intellectual Property Office
LINCOLN ELECTRIC	US / United States	2350082	May 16, 2000	9
Patent and Trademark Office
LINCOLN ELECTRIC	US / United States	2420805	January 16, 2001	35
Patent and Trademark Office
LINCOLN ELECTRIC	US / United States	3114157	July 11, 2006	6
Patent and Trademark Office
LINCOLN ELECTRIC	Canada / Canadian	TMA573494	January 13, 2003	1
Intellectual Property Office
LINCOLN ELECTRIC	Canada / Canadian	TMA574202	January 22, 2003	7, 9
Intellectual Property Office

Lincoln Electric was founded in 1895 and designed and sold electric motors. The company’s product line later expanded to include battery chargers for electric automobiles, welding machines, and other products in the United States. Beginning in 1936 it also started to expand globally when it established The Lincoln Electric Company Pty Ltd in Australia. Today, Lincoln Electric engages in world-wide design, development and manufacture of arc welding products, robotic arc welding systems, plasma and oxy-fuel cutting equipment and other markets.

Headquartered in Cleveland, Ohio, Lincoln Electric has 71 manufacturing locations, including operations and
joint ventures in 20 countries and a worldwide network of distributors and sales offices covering more than
160 countries. Lincoln Electric employs over 12,000 employees worldwide. In 2022, Lincoln Electric
(NASDAQ: LECO) reported sales of USD $3.8 billion.

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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 1.2 million visitors during the period of November 2023 – January 2024, and is ranked 7th in its industry, 31,051st in the United States and 112,95th globally.

In addition to its many domain names and websites, Lincoln Electric has a strong social media presence through the use of its Facebook, Twitter and Youtube pages.

The disputed domain name was registered on January 19, 2024, and at the time of filing the Complaint it was not used in connection with an active website. Additionally, according to the available record, the disputed domain name resolved to a website containing Pay-Per-Click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, Complainant contends that the disputed domain dame varies from Complainant’s trademark by just one letter – Respondent has added another letter “i” before the “t” in ELECTRIC. Respondent’s domain name should therefore be deemed a prototypical example of typosquatting – i.e., intentionally taking 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.

Respondent is not sponsored by or affiliated with Complainant in any way. Furthermore, Complainant has not given Respondent permission to use Complainant’s trademarks in any manner, including in domain names. Respondent is not commonly known by the disputed domain name and has not demonstrated any attempt to make legitimate use of the disputed domain name, thereby indicating a lack of rights or legitimate interests.

The disputed domain dame is a typosquatted version of Complainant’s LINCOLN ELECTRIC trademark and has intentionally been designed to closely mimic Complainant’s trademark and primary domain. 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 ¶

4(a)(iii).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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
Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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Here, through its lengthy use, substantial world-wide sales and other business activities, and numerous
national trademark registrations, Complainant has plainly shown extensive rights in respect of the LINCOLN
ELECTRIC trademark pursuant to the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel further finds that the mark is recognizable within the disputed domain name. WIPO Overview 3.0, section 1.7. Indeed, the disputed domain name is identical to Complainant’s mark except for the introduced typographical error. As explained in WIPO Overview 3.0, section 1.9., a domain name that consists of a

common, obvious, or intentional misspelling of a trademark is generally deemed to be confusingly similar to

the relevant mark.

The Panel finds Complainant has established the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which 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.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s 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.

The Panel finds Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

Panels have consistently found that the registration of a domain name that is identical or confusingly similar
to a widely-known trademark (particularly domain names adding common or intentionally-introduced
typographical errors to that mark) by an unaffiliated entity can by itself create a presumption of bad faith.
WIPO Overview 3.0, section 3.1.4. Given the long use and renown of Complainant’s LINCOLN ELECTRIC
marks, and the striking similarity between the mark and the domain name, it is highly implausible that
Respondent was not aware of Complainant’s marks at the time Respondent registered and used the
disputed domain name. In light of this knowledge and the very slight variation between the disputed domain
name and Complainant’s mark, the Panel finds that Respondent engaged in typosquatting (see Longs Drug
Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069). Likewise, in ALK-Abelló A/S v. Manila
Industries Inc., WIPO Case No. D2006-1033, the Panel held: “Furthermore, it is well-settled that the practice
of typo squatting, in and of itself, can be seen as an indication of the bad faith registration of a domain
name”.

Further, Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the current non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding.

Although panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or

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reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3.

Having reviewed the available record, the Panel notes the distinctiveness and reputation of the
Complainant’s trademark, the typosquatting nature of the disputed domain name, and the previous use of the
disputed domain name resolving to a website containing PPC links, and finds that in the circumstances of
this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the

Policy.

The Panel finds that Complainant has established the third element 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 <lincolnelecitric.com> be transferred to Complainant.

/Michael A. Albert/
Michael A. Albert
Sole Panelist
Date: April 10, 2024