The Lincoln Electric Company and Lincoln Global, Inc. v Sanjay Singh

WIPO Case No. D2025-0941

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Lincoln Electric Company and Lincoln Global, Inc. v. Sanjay Singh
Nirwan

Case No. D2025-0941

1. The Parties

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

United States of America, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Sanjay Singh Nirwan, India.

2. The Domain Name and Registrar

The disputed domain name <lincoineiectric.com> is registered with BigRock Solutions Pvt Ltd. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2025. connection with the disputed domain name. On March 8, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 the Respondent of the
Complaint, and the proceedings commenced on March 10, 2025. In accordance with the Rules, paragraph
5, the due date for Response was March 30, 2025. The Respondent sent email communications to the

Center on March 11, 19, 22, and 27, 2025, and the Response was filed with the Center on March 22, 2025.

The Center appointed Alistair Payne as the sole panelist in this matter on April 4, 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.

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4. Factual Background

The Complainants are members of the same group (”the Complainant”) which designs, develops, and manufactures arc welding products, robotic arc welding systems, plasma and oxy-fuel cutting equipment and has a leading global position in the brazing and soldering alloys market. Headquartered in Cleveland, Ohio, the Complainant 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. It employs over 12,000 employees worldwide and in 2023 reported sales of USD 4.2 billion.

The Complainant owns numerous trade mark registrations incorporating its LINCOLN ELECTRIC mark including Indian trade mark registration 1441494 for LINCOLN ELECTRIC filed on March 30, 2006, and United States of America trade mark registration 75746323 for LINCOLN ELECTRIC registered on January

16, 2001. It owns over 325 domain names which incorporate the LINCOLN ELECTRIC trade mark, including its primary domain name and website at <lincolnelectric.com> which received an average of 462,000 hits per month in the period from October 2024 – December 2024.

The disputed domain name was registered on November 4, 2024. It currently resolves to the Complainant’s website at <lincolnelectric.com>.

5. Parties’ Contentions
A. Complainant

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

Notably, the Complainant contends that it owns registered trade mark rights for its LINCOLN ELECTRIC trade mark as noted above and that the disputed domain name differs from the Complainant’s trade mark by two letters and is a deliberate misspelling calculated to confuse Internet users and therefore a classic

example of typosquatting. It says that the fact that the disputed domain name resolves to the Complainant’s
website only heightens the level of confusion.

The Complainant submits that the disputed domain name was registered long after the Complainant’s registration or first use in 1915 of its LINCOLN ELECTRIC trade mark. It says that the Respondent is not commonly known by the disputed domain name and that the Complainant has not licensed, authorised, or permitted the Respondent to register domain names incorporating the Complainant’s trade mark. It also says that the Respondent is using the disputed domain name to redirect to the Complainant’s official website at <lincolnelectric.com> and accordingly that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Additionally, says the Complainant, the disputed domain name has been set up by the Respondent to enable mail exchange (“MX”) records which according to the Complainant suggests that the Respondent is likely to use, or intends to use, the email addresses hosted by the disputed domain name to confuse Internet users into believing that they are dealing with the Complainant when they are not.

As far as registration in bad faith is concerned, the Complainant notes that the disputed domain name was registered on July 8, 2024, many years after the Complainant’s registration and first use of its trade mark. It submits that by registering a domain name that misspells the Complainant’s LINCOLN ELECTRIC trade mark the Respondent has created a domain name that is similar to the Complainant’s trade mark and

domain name and in doing so has demonstrated a knowledge of and familiarity with the Complainant’s brand that the Respondent was targeting the Complainant and its business.

and business. According to the Complainant, this is even more so the case in circumstances that the

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In terms of use of the disputed domain name in bad faith, the Complainant says that the Respondent is using the disputed domain name to create a likelihood of confusion between it and the Complainant’s LINCOLN ELECTRIC trade mark which leads to misperceptions as to the source, sponsorship, affiliation, or

endorsement of the disputed domain name in terms of paragraph 4(b)iv of the Policy. In this regard the Complainant notes that the Respondent’s re-direction of the disputed domain name to the Complainant’s own website raises the risk that the Respondent may at any time cause Internet traffic to redirect to websites that are not owned by, or associated with, the Complainant which previous panels have found amounts to use in bad faith (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 3.1.4).

The Complainant also submits that the existence of active MX records attached to the disputed domain name, permitting it to be used for email, creates an ongoing implied threat to the Complainant that the disputed domain name may be used for fraudulent activities which further supports an inference of bad faith.

The Complainant says that it sent a cease-and-desist letter to the Respondent on November 27, 2024 which resulted in a string of correspondence as is summarised below:

• The Respondent replied stating the purpose of registering the domain name was for the potential

resale at a fair value;

• The Complainant reiterated the request, highlighting to the Respondent the Complainant’s strict policy against unauthorised third-party domain name registrations containing their trade marks;

• The Respondent replied, stating that the purchase and registration of the disputed domain name was

available in the registrar portal and that the transaction was fairly and transparently conducted with the intent
for future resale;

• The Complainant explained to the Respondent its responsibility regarding the registration of domain names that infringe a third-party’s trade marks;

• The Respondent then agreed to transfer the domain name. The Respondent requested further

documentation to support the Complainant’s claim to the domain name.

• The Complainant sent a final response, stating it does not issue compensation for domain names that

take unfair advantage of its trade marks and further demanded the voluntary transfer of the domain name, at
which point, no further reply was received from the Respondent.

Since its efforts of trying to solve the matter amicably were unsuccessful the Complainant chose to file this

Complaint.

B. Respondent

The Respondent filed no formal response to the Complaint but sent various emails to the Center, including the following one on March 22, 2025, as follows:

“Please find my response below.

I have purchase the domain which is similar to lincolnelectric.com but it is not same. This domain is available and I have procured this.

What is the issue if lincolnelectric want this I can sale them.

Let me know if there is any issue in this.”

Following a further email from the Center to confirm his response, the Respondent confirmed on March 27,
2025, as follows:

“Thank you for your email dated March 26, 2025. I confirm that my prior communication may be regarded as my complete Response regarding WIPO Case D2025 0941. I trust this will enable the Center to proceed with the appointment of the Panel as indicated.”

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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 the Complainant’s trademark and the disputed domain name. WIPO Overview 3.0”, section 1.7.

The Complainant has 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 Panel finds the mark is recognisable 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. It comprises a misspelt confusingly similar version of the Complainant’s LINCOLN ELECTRIC mark by the replacement of two of the letters “l” in LINCOLN ELECTRIC with “i”. This amounts to typosquatting under section 1.9 of the WIPO Overview 3.0 and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark under this element of the Policy and therefore that 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 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 Complainant has submitted that the disputed domain name was registered long after the Complainant’s registration or first use in 1915 of its LINCOLN ELECTRIC trade mark. The Respondent is not commonly known by the disputed domain name and has not licensed, authorised, or permitted the Respondent to

register domain names incorporating the Complainant’s trade mark. The Complainant has also submitted that the Respondent is using the disputed domain name to redirect to the Complainant’s official website at <lincolnelectric.com> and accordingly that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

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

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In the present case, the Panel finds that the Respondent registered the disputed domain name on July 8, 2024, many years after the Complainant’s registration and first use of its trade mark. The Complainant’s mark is quite distinctive and well reputed internationally as a consequence of the Complainant’s substantial business and the disputed domain name is clearly an intentional misspelling of it. The fact that the disputed domain name resolves to the Complainant’s domain name and official website confirms that it is more than likely that the Respondent registered the disputed domain name with knowledge of the Complainant’s brand and business.

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.

In particular, paragraph 4(b)(i) of the Policy deems there to be registration and use in bad faith in circumstances that a respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name.

In this case the Respondent confirmed both in the email that he sent by way of response and in his pre action correspondence with the Complainant, that he intended to sell the disputed domain name.

On December 8, 2024, the Respondent replied to the Complainant’s cease-and-desist letter by email, in particular, stating as follows:

“I have paid a significant amount for this domain and intend to use it solely for resale in the future to
interested buyers who offer a fair value. Please let me know if there are any compliance or legal concerns I
need to address”.

The Complainant has noted that the Respondent then agreed to transfer the disputed domain name. Considering that the disputed domain name is a typosquatted version of the Complainant’s quite distinctive LINCOLN ELECTRIC trade mark, it is most likely that the Respondent, who as noted above appears to have been aware of the Complainant’s well established business and trade mark, registered it with the intention of selling it to the Complainant, or to one of its competitors, in excess of the bare registration cost. In this regard, the Panel notes that the typosquatted disputed domain name does not appear to have any meaning itself, beyond the apparent association with the Complainant’s trade mark, and indeed the Respondent has not indicated any other meaning, which suggests an intent to take unfair advantage of the Complainant’s trade mark for the Respondent’s own commercial benefit. Accordingly, the Panel finds that the requirements of paragraph 4(b)(i) of the Policy are met and that this amounts to evidence of registration and use in bad faith.

The Panel notes that, by registering the disputed domain name as a typosquatted version of the Complainant’s very well reputed LINCOLN ELECTRIC trade mark the Respondent was obviously targeting the Complainant and its mark which is further evidence of the Respondent’s bad faith. The Respondent’s re- direction of the disputed domain name to the Complainant’s own website raises the risk that the Respondent could at any time cause Internet traffic to redirect to websites that are not owned by, or associated with, the Complainant. Previous panels have found that such use of a disputed name supports a finding of use in bad faith (See WIPO Overview 3.0 at section 3.1.4) and the Panel agrees with that analysis in the context of this case.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <lincoineiectric.com> be transferred to the Complainant.

/Alistair Payne/
Alistair Payne
Sole Panelist
Date: April 14, 2025