The Lincoln Electric Company v Domain Admin, Privacy Protect, LLC

WIPO Case No. D2022-4878

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

The Lincoln Electric Company v. Domain Admin, Privacy Protect, LLC
(PrivacyProtect.org) / Domain Admin, TotalDomain Privacy Ltd

Case No. D2022-4878

1. The Parties

The Complainant is The Lincoln Electric Company, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Domain

Admin, TotalDomain Privacy Ltd, Panama.

2. The Domain Name and Registrar

The disputed domain name <lincolneletric.com> 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 December 20, 2022. On December 20, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 21, 2022 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 22, 2022.

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 the Respondent of the Complaint, and the proceedings commenced on December 28, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2023.

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The Center appointed Marilena Comanescu as the sole panelist in this matter on January 25, 2023. 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

Founded in 1895 by John C. Lincoln, with a capital investment of USD 200 to make electric motors he had designed, the Complainant has become one of the world leaders in the design, development, and manufacture of arc welding products, robotic arc welding systems, plasma and oxy-fuel cutting equipment, and in the brazing and soldering alloys market.

Currently, the Complainant is headquartered in Cleveland, Ohio, and has over 11,000 employees worldwide, 60 manufacturing locations, including operations and joint ventures in 19 countries and a worldwide network of distributors and sales offices covering more than 160 countries. In 2018, the Complainant reported sales of USD 3 billion.

The Complainant holds worldwide trademark registrations for LINCOLN ELECTRIC, such as the following:

- the United States Registration No. 2350082, filed on June 25, 1999, and registered on
May 16, 2000, covering goods in the International Class 9; and

- the United States Registration No. 2420805, filed on July 9, 1999, and registered on
January 16, 2001, covering services in the International Class 35.

The Complainant holds a portfolio of over 700 domain name registrations which incorporate its trademarks, including LINCOLN ELECTRIC, the primary one being <lincolnelectric.com>, registered in 1996.

The disputed domain name <lincolneletric.com> was registered on October 16, 2003, and, according to the evidence provided in the Complaint, it was used in connection with pay-per-click (“PPC”) pages with sponsored links related to, inter alia, metal and steel welding and fabrication.

Also, according to evidence provided in the Complaint, the disputed domain name was offered for public sale on a third party website for the amount of USD 3,239.

On February 15, 2021, the Complainant sent a cease-and-desist letter to the Respondent in relation to the disputed domain name. A follow up letter was sent on February 26, 2021. The letters remain unanswered.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its distinctive and internationally known trademark LINCOLN ELECTRIC, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

In view of the absence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)       the Respondent has no rights or legitimate interests in the disputed domain name; and

(iii)      the disputed domain name has been registered and is being used in bad faith.

The Panel will further analyze the potential concurrence of the above circumstances.

A. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the LINCOLN ELECTRIC trademark.

The disputed domain name incorporates the Complainant’s trademark with the first letter “c” in the term
“electric” removed. However, such alteration does not prevent a finding of confusing similarity as the

Complainant’s trademark is clearly recognizable within the disputed domain name.

Numerous UDRP panels have considered that a domain name consisting of a mispelling of the
complainant’s trademark (i.e., typosquatting) does not prevent a finding of confusing similarity. See section
1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO

Overview 3.0”).

Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g.,
“.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity
between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.

Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark LINCOLN ELECTRIC, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant asserts that it has given no license or other right to use its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See section 2.1 of the WIPO Overview 3.0.

The Complainant has put forward a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Respondent has not replied to the Complainant’s contentions to advance a claim to any rights or legitimate interests in the disputed domain name.

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According to the records before it, the Respondent has used the disputed domain name in connection with a parking page displaying PPC links, promoting services of the Complainant’s competitors. UDRP panels have constantly found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s marks or otherwise mislead Internet users. See section 2.9 of the WIPO Overview 3.0.

For all these reasons, the Panel finds that the second element of the Policy is established, and the
Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the

Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant has been operating its business since 1915; promotes its business under the domain name <lincolnelectric.com> since 1996; and its trademark LINCOLN ELECTRIC is distinctive and has aquired reputation in its industry.

The disputed domain name was registered in 2003 and incorporates the Complainant’s distinctive mark with an obvious typo.

From the above, the Panel finds that the Respondent was aware of the Complainant, its business, and trademark at the registration of the disputed domain name.

At the time of filing the Complaint, the disputed domain name resolved to a page providing PPC links promoting various goods and services, including goods similar to those provided by the Complainant.

Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.

The Respondent was using without permission the Complainant’s distinctive trademark with an obvious alteration in order to get traffic on its web portal and to misleadingly divert Internet users to third parties websites, and thus to obtain commercial gain from the false impression created with regard to a potential

affiliation or connection with the Complainant.

Further, the disputed domain names were offered for public sale on a third party website for an amount likely exceeding the out-of-pocket expenses incurred with its registration. Consequently, the Panel deems applicable the circumstances listed under paragraph 4(b)(i) of the Policy providing that the Respondent has registered the disputed domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to the Complainant or its competitors for an amount likely in excess of the documented out-of-pockets costs.

The disputed domain name was registered under a privacy service within yet another privacy service. The majority of the UDRP panels view the provision of an additional privacy or proxy service underlying a privacy or proxy service as an indication of bad faith, where the Respondent has employed such privacy services to avoid being notified of a UDRP proceeding filed against it – which appears to be the case here. See section 3.6 of the WIPO Overview 3.0.

The Respondent failed to provide any argument in its favor in response to the Complainant’s cease-and- desist letter and present Complaint. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith.

Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a third party’s

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famous or widely-known trademark can create, by itself, a presumption of bad faith for the purpose of Policy.
See section 3.1.4 of the WIPO Overview 3.0.

For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 <lincolneletric.com> be transferred to the Complainant.

/Marilena Comanescu/
Marilena Comanescu
Sole Panelist
Date: February 8, 2023