Lincoln Global, Inc., the Lincoln Electric Company v sajeel altaf

WIPO Case No. D2024-3269

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Lincoln Global, Inc., The Lincoln Electric Company v. sajeel altaf,
[Organization Redacted]

Case No. D2024-3269

1. The Parties

1.1 The Complainants are Lincoln Global, Inc., United States of America, and The Lincoln Electric

Company, United States of America (“United States”), represented by CSC Digital Brand Services Group AB,

Sweden.

[1] The Complainants have asked that the name of the Respondent be redacted throughout this decision. They are concerned that the

1.2 The Respondent is sajeel altaf, [Organization Redacted], Pakistan.[1]

2. The Domain Name and Registrar

2.2 The disputed domain name <lincolnelectricus.com> (the “Domain Name”) is registered with

NameCheap, Inc. (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2024. At that time, publicly available WhoIs details did not identify the registrant of the Domain Name.

3.2 On August 9, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response, disclosing the underlying registrant and contact information for the Domain Name.

The Center sent an email to the Complainants on August 12, 2024, providing the registrant and contact

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information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the

Complaint. The Complainants filed an amended Complaint on August 15, 2024.

3.3 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”).

3.4 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on September 16, 2024.

3.5 The Center appointed Matthew S. Harris as the sole panelist in this matter on September 18, 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

4.1 The Complainants both form part of the “Lincoln Electric group”, both being owned by Lincoln Electric Holdings Inc. The Lincoln Electric group is headquartered in Cleveland Ohio.

4.2 The business of the group was founded in 1895, by John C. Lincoln and his brother, James F. Lincoln,

offering for sale electric motors for automobiles and related products. It has over the years expanded in the systems, plasma and oxy-fuel cutting equipment. It operates 71 manufacturing and automation system integration locations across 21 countries and maintains a worldwide network of distributors and sales offices serving customers in over 160 countries. The group employs over 12,000 employees worldwide and in 2022 reported sales of USD 3.8 billion.

4.3 The group owns over 700 domain names, but the primary domain name it uses for a website that

promotes its business is <lincolnelectric.com>. That website received over 1.2 million visitors from

November 2023 to January 2024. It also has a social media presence on Facebook, Twitter, and Youtube.

4.4 The Complainants are the owners of numerous trade marks that either incorporate or comprise the

term “Lincoln Electric”. These include:

(i)        European Union registered trade mark no 004725941 for LINCOLN ELECTRIC as a word mark in

classes 6, 9, and 35 with a filing date of November 17, 2005 and a registration date of November 27, 2006,
registered in the name of Lincoln Global Inc.;

(ii) United States registered trade mark no 2350082 for LINCOLN ELECTRIC as a standard character

mark in classes 9 with an application date of June 25, 1999 and a registration date of May 16, 2000,
registered in the name of The Lincoln Electric Company;

(iii) Canadian registered trade mark no TMA574202 for LINCOLN ELECTRIC as a word mark in classes 7

and 9 with a filing date of January 29, 2001 and a registration date of January 22, 2003, registered in the
name of Lincoln Global Inc; and

(iv) Indian registered trade mark no 985668 for LINCOLNELECTRIC as a word mark in class 9 with an application date of January 23, 2021, registered in the name of The Lincoln Electric Company.

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4.5 The Domain Name was registered on April 3, 2024. It has been used to what appears to be a pay- per-click website featuring links to third-party websites. As at the end of July 2024, when viewed from the United States, those links appear to be related to car dealerships. MX records have also been set up in

relation to the Domain Name.

5. Parties’ Contentions

A. Complainant

4.6 The Complainants contend that they have satisfied each of the elements required under the Policy for a transfer of the Domain Name.

4.7 In this respect they refer to their business and marks and the use being made of the Domain Name. The Complainants contend that the Domain Name incorporates their trade mark in its entirety and that the

letters “us” in the Domain Name are a reference to the United States and as a result the Domain Name is

confusingly similar to their marks.

4.8 The Complainants further contend that in the WhoIs details for the Domain Name the Respondent is falsely identifying itself as the Complainants or as associated with the Complainants. They also claim that because MX records have been configured, the Respondent is likely to use or intends to use the email

addresses, to confuse Internet users into believing they are dealing with Complainants when they are not.

4.9 The Complainants also claim that the “the Respondent knew, or at least should have known, of the existence of the Complainant’s trademarks” given the fame and extent of the Complainants’ business and

that Internet searches for “lincoln electric us” would have identified the Complainants. In this respect the

Complainants provide a screenshot of a Google search, presumably conducted from the United States in which all the results on the first page refer to the Lincoln Electric group or its products.

B. Respondent

4.10 The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

6.1 It is generally 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 trade mark and the domain name. WIPO Overview of WIPO Panel

Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

6.2 The Complainants have shown that they have rights in the registered trade mark LINCOLN

ELECTRIC. WIPO Overview 3.0, section 1.2.1.

6.3 The most sensible reading of the Domain Name is as the words “Lincoln Electric” combined with the

letters “us”, and the “.com” generic Top-Level Domain. Accordingly, the entirety of the Complainants’ mark is

reproduced within the Domain Name and as a consequence that mark is clearly recognisable within Domain

Name.

6.4 It follows that the Domain Name is confusingly similar to the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.7. Further, the addition of the letters “us” does not prevent a finding of

confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview
3.0, section 1.8.

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

B. Rights or Legitimate Interests and Registered and Used in Bad Faith

6.6 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and

registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues
together. WIPO Overview 3.0, section 2.15.

6.7 The Panel is persuaded that the Domain Name inherently and falsely represents that it is controlled by

the Complainants. The words “Lincoln Electric” are most likely to be understood as referring to the
Complainants’ mark and business and the letters “us” are most likely to be understood as a reference to the

United States. It follows that the Domain Name is most likely to be understood by Internet users as one that is being or will be used for a website or other online presence or activity operated by the Complainants in respect of their activities in the United States.

6.8 The Panel also accepts that it was the deliberate intention of the Respondent that the Domain Name be understood that way and has been registered and held to impersonate the Complainants.

6.9 There are perhaps other ways in which the Domain Name could conceivably be understood. For

example, even though there is no formal evidence before the Panel on this point, the fact that the pay-per-
click website operating from the Domain Name displayed links to car dealerships, suggests that the Domain

Name also might be read as referring in some way to the LINCOLN branded cars. However, the

Respondent’s actual intentions here are clear from the underlying WhoIs registration details provided by the

Registrar in the course of these proceedings. These show that the Respondent purported to register the

Domain Name on behalf of “Lincoln Electric Holdings Inc”. This is a clear and unambiguous reference to the

parent company of the Complainants and the Lincoln Electric group.

6.10 Why the Respondent is doing this is unclear. The Complainants claim that this may be for the purpose

of sending emails impersonating the Complainants. However, regardless of the exact reason, the Panel is

satisfied that the Respondent is seeking to profit in some fashion from its impersonation of the Complainants.

6.11 There are no rights or legitimate interests in holding a domain name for the purpose of falsely

impersonating a trade mark owner (see section 2.5.1 the WIPO Overview 3.0), and the fact that a domain name is or has been used for such a purpose is evidence that no such rights or legitimate interests exist. Further, the registration and use of a domain name for such a purpose involves registration and use in bad

faith (see also in this respect to the comments in sections 3.1.1 and 3.2.1 of the WIPO Overview 3.0
regarding domain names that take the form of a mark and a geographical term and the comments in section
3.6 of the WIPO Overview 3.0 as to the use of false contact details).

6.12 Further, the Respondent’s use of the Domain Name for a pay-per-click website also falls within the example of circumstances evidencing bad faith set out in paragraph 4(b)(iv) of the UDRP.

6.13 In the circumstances, the Panel finds that the second and third elements of the Policy have been

established.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lincolnelectricus.com> be transferred to the Complainants.

/Matthew S. Harris/

Matthew S. Harris

Sole Panelist
Date: September 25, 2024

identification of a company within the Complainants’ group of companies as the Respondent, in circumstances where that company was

Banco

not in fact responsible for the registration, would cause confusion. Panels have redacted names of respondents in the past. In the formal name of the decision the name of an innocent third party individual who had had their domain name account hijacked, and did not otherwise identify the name that person in its decision. The Panel is not convinced that there is a good reason not to mention in the present decision in what name the Domain Name was registered. The name used was not of an innocent individual. However, the

Panel does understand the Complainants’ concern that if a company in its group is recorded in the formal name of this decision, that

might potentially be misunderstood. It, therefore, directs that the formal name of this decision be redacted.