Lincoln Global, Inc. and the Lincoln Electric Company v Name Redacted

WIPO Case No. D2024-1677

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lincoln Global, Inc. and The Lincoln Electric Company v. Name Redacted

Case No. 2024-1677

1. The Parties

Complainants are Lincoln Global, Inc. and The Lincoln Electric Company, United States of America (“United

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

Respondent is Name Redacted, United States.[1]

[1]For the reasons discussed later in this decision, the Panel believes that Respondent has used the name of a third party when

2. The Domain Name and Registrar

The disputed domain name <lincolnelectric.site> is registered with NameCheap, Inc. (“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on April 22, 2024 as to the disputed domain name and a second domain name. On April 22, 2024, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name and the second domain name. On April 22, 2024, Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for each of the domain names that differed from that in the Complaint (e.g., the Complaint identified “Redacted for Privacy, Privacy Service Provided by Withheld for Privacy ehf” as Respondent) and that differed from each other. The Center sent an email communication to Complainants on April 24, 2024, providing the registrant and contact information disclosed by Registrar and inviting them to submit an amendment to the Complaint.

Following communications to the Center, at the request of Complainants, the Center suspended the proceeding until June 1, 2024, for purposes of settlement negotiations, pursuant to paragraph 17(a) of the

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Rules, and on June 4, 2024, the second domain name was withdrawn from the proceeding following a settlement. Complainants filed an amended Complaint on June 14, 2024, relating only to the disputed domain name.

The Center verified that the Complaint together with the amendment to the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (“Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 8, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 22, 2024.

The Center appointed Debra J. Stanek as the sole panelist in this matter on August 2, 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

Complainants design, develop, and manufacture welding products and brazing and soldering alloys in over

160 countries worldwide.

Each of Complainants owns trademark registrations for the LINCOLN ELECTRIC mark for electrical
apparatus, welding products, and related services, including: Canadian Registrations No. 1090771
(registered January 13, 2003) and No. 1090772 (registered January 22, 2003) owned by Complainant
Lincoln Global, Inc. and United States Registrations No. 2350082 (registered May 16, 2000) and

No. 3114157 (registered July 11, 2006)[2].

Complainants also own and operate a website under the <lincolnelectric.com> domain name.

The disputed domain name was created on October 28, 2023. At the time the Complaint was filed, it resolved to a parked page that apparently contained pay-per-click links, including some identified as welding products. According to the Complaint, Respondent has falsely identified itself using the name of an executive at Complainant Lincoln Electric Holdings, Inc. and one of Complainants’ corporate addresses. In addition, Complainants provide a report to show that the disputed domain name has been configured so that it can be used to create one or more email addresses.

[2] The United States registrations each disclaim an exclusive right to use the term “electric” apart from the mark as shown in the

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.

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In particular:

- The disputed domain name incorporates the entirety of Complainants’ LINCOLN ELECTRIC mark,

merely omitting the space between “Lincoln” and “electric,” and was registered long after Complainants’

registrations issued.

- Respondent is not commonly known by the disputed domain name, and Complainants have not

authorized use of its mark in the disputed domain name. Further, Respondent has falsely identified itself
using the personal name of an executive of one of Complainants and using the address of one of

Complainant’s corporate offices.

- There is no plausible actual or contemplated use of the disputed domain name that would be

legitimate.

- The disputed domain name may in future be used to send phishing emails.

- Registration of a disputed domain name comprised of Complainants’ mark shows that Respondent

was aware of Complainants’ mark and was targeting Complainants.

- Complainants’ correspondence demanding Respondent cease use of the disputed domain name was not delivered because Respondent provided false information in its WhoIs record.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

A. Procedural Issue: Multiple Complainants

The Complaint identifies two Complainants, “sister” companies Lincoln Global, Inc. and The Lincoln Electric
Company. Complainant Lincoln Global, Inc. owns the cited Canadian trademark registrations while
Complainant The Lincoln Electric Company owns the cited United States federal trademark registrations.

Neither the Policy nor the Rules provide for multiple Complainants. While Complainants do not specifically request consolidation, the Panel, consistent with the consensus view, determines that consolidation is appropriate here; the Complaint establishes that these related parties have a common grievance against Respondent, and it is equitable and efficient to do so. See WIPO Overview 3.0, section 4.11.1.

To prevail under the Policy a complainant must prove, as to the domain name at issue, that: (a) it is identical
or confusingly similar to a mark in which the complainant has rights, (b) respondent has no rights or
legitimate interests in respect to it, and (c) it has been registered and is being used in bad faith. Policy,
paragraph 4(a). A respondent’s failure to respond does not automatically result in a finding for the
complainant; the complainant continues to have the burden of establishing each element. See
WIPO Overview 3.0, section 4.3. The Panel may, however, draw appropriate inferences from the default.

See Rules, paragraph 14(b).

B. Substantive Matters

1. 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 3.0, section 1.7.

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

The entirety of the LINCOLN ELECTRIC mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is identical to the mark for the purposes of the Policy. See WIPO Overview 3.0, section 1.7.

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

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 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. See WIPO Overview 3.0, section 2.1.

The Panel finds Complainants have established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name[3]. 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.

The Panel finds the second element 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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Taking into account the wholesale inclusion of the mark in the disputed domain name, Complainants’ use of the LINCOLN ELECTRIC mark long prior to creation of the disputed domain name, Respondents’ use of false information as well as a privacy service, and Respondent’s failure to respond, the Panel finds that the registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds the third element of the Policy has been established.

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[3] Under these circumstances, use of the disputed domain name to host a page with pay-per-click links related to Complainants’ offerings

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 <lincolnelectric.site> be transferred to Complainant The Lincoln

Electric Company.[4]

[4]The Complaint requested only that the domain name be transferred to “Complainant,” which it defined as both of the named

/Debra J. Stanek/
Debra J. Stanek
Sole Panelist
Date: August 16, 2024

registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this
decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed
domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as
part of the order in this proceeding and has indicated Annex 1 to this decision shall not be published due to the exceptional
circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case
No. D2009-1788.

registration.

(i.e., welding-related products) does not constitute a bona fide commercial offering.

Complainants.