W.W. Grainger, Inc. v 李策平 (li ce ping)

WIPO Case No. D2022-4251

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

W.W. Grainger, Inc. v. 李策平 (li ce ping)

Case No. D2022-4251

1. The Parties

The Complainant is W.W. Grainger, Inc., United States of America (“United States”), represented by

Greenberg Traurig LLP, United States.

The Respondent is 李策平 (li ce ping), China.

2. The Domain Name and Registrar

The disputed domain name <grangerswebsite.com> (the “Domain Name”) is registered with Alibaba Cloud

Computing Ltd. d/b/a HiChina ( (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on sent an email communication to the Complainant on November 14, 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 in English on November 14, 2022.
November 8, 2022. On November 9, 2022, the Center transmitted by email to the Registrar a request for
registrar verification in connection with the Domain Name. On November 11, 2022, the Registrar transmitted
by email to the Center its verification response disclosing registrant and contact information for the Domain

On November 14, 2022, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On November 14, 2022, the Complainant submitted its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on November 22, 2022. In accordance with

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the Rules, paragraph 5, the due date for Response was December 12, 2022. The Respondent did not

submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2022.

The Center appointed Karen Fong as the sole panelist in this matter on December 19, 2022. 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 Complainant, based in the United States, is a publicly traded company on the New York and Chicago are provided under the brand name GRAINGER which it first used in 1928. The Complainant has over USD 11 billion in annual sales. It has operations in Asia, Europe, and Latin America as well and has over 24,000 employees worldwide.
Stock Exchanges which has been in business for over 85 years. The Complainant is a leading North

The Complainant has a portfolio of trade mark registrations for the GRAINGER brand all over the world including in the United States and China. The earliest trade mark registration submitted in evidence is United States Trade Mark No. 1559199 which was registered on October 3, 1989 (collectively, the “Trade

Mark”). The Complainant’s primary website is found at “ The Complainant has a slogan
which is uses with the trade mark – “For the Ones Who Get it Done” (“Slogan”). The Complainant uses the
Trade Mark and Slogan in the form of a stylized device which is also registered as a trade mark (“Stylised
Device”).

The Respondent, based in China, registered the Domain Name on August 30, 2022. At the time of filing of the Complaint, the Domain Name resolved to a website which prominently displays the Trade Mark as well as the Stylized Device and mimics various aspects of the Complainant’s website. In the “About Granger”

section, it says “Over 90 Years Serving Businesses, Big & Small. Shop with Grainger® Today! America’s Trusted Source For Industrial-Grade Supplies & Safety Products. Get The Grainger® App. Trusted Since 1927.” The website purports to provide information about the Complainant’s products and services but
instead re-directs Internet users to listings on Amazon.com through affiliated links (the “Website”). The

Website is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the
Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain
Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain

Name.

B. Respondent

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

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6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:

(i)        the Domain Name is identical or confusingly similar to the trade marks or service marks in which the Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name was registered and is being used in bad faith.

B. Language of the Proceeding

The Rules, paragraph 11(a), provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Name is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons:

(a)	The Domain Name contains English words in Latin script rather than Chinese script;
(b)	The Website is in English;
(c)	The Complainant’s counsel, based in the United States, is unable to communicate in Chinese and it would be an undue burden for the Complainant to submit Chinese translations;
(d)	The Respondent has been involved in another UDRP decision where English was determined to be the language of the proceeding (Deciem Beauty Group Inc. v. 李策平 (li ce ping), WIPO Case No. D2021-0416).

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time, and costs.

The Panel notes that the Domain Name consists of Latin characters and the content of the Website is in the
English language which indicates that the Respondent is highly likely to be familiar with the English
language. Although the Center has sent the “Language of Proceedings” email and notified the Parties the
commencement of the proceeding in both Chinese and English, the Respondent has not challenged the
Complainant’s language request and in fact has failed to file a response in either Chinese or English. The
Panel is also mindful of the need to ensure the proceeding be conducted in a timely and cost effective
manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in

Chinese. In all the circumstances, the Panel determines that English be the language of the proceeding.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

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In this case, the Domain Name consists of a misspelling of the Trade Mark with the “i” being deleted, an “s” being added at the end of the Trade Mark and the addition of the word “website” after the misspelled Trade Mark. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that a domain name which consists of a common, obvious, or intentional

misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for the
purposes of the first element. In this case, the Trade Mark remains clearly recognizable in the Domain
Name.

For the purposes of assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11.1 of the WIPO Overview 3.0).

The Panel finds that the Domain Name is confusingly similar to the Trade Mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the domain name by demonstrating any of the following:

(i)

before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, of goods or services; or

(ii)       the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii)      the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers, or to tarnish the trade mark or service mark at issue.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made out, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with such relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent is not commonly known by the Domain Name. It has not authorised, licensed, or otherwise permitted the Respondent to use the Trade Mark in the Domain Name or for any other purpose. Further, the unauthorised use of the Trade Mark and impersonation of the Complainant’s website for the purpose of redirecting visitors to listings on Amazon.com through affiliated links does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the Domain Name as the Website effectively impersonates or suggests sponsorship or endorsement by the Complainant (also noting the Website does not accurately and prominently disclose the lack of relationship between the Parties) and the revenue generated by the Respondent is derived from Internet users being misled by the confusingly similar Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for a reply from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the

Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

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E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when he registered the Domain Name given that the Trade Mark has no other meaning other than being the Complainant’s company name and Trade Mark, both of which have been used and registered long before the Domain Name. The

fact that the Website prominently displays the Trade Mark and the Stylised Device as well as impersonates

the Complainant’s website also demonstrates the Respondent’s knowledge of the Complainant.

In the WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in
circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a
respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers),
panels have been prepared to infer that the respondent knew, or have found that the respondent should
have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further
factors including the nature of the domain name, the chosen top-level domain, any use of the domain name,
or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s
mark.”

There is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Name are also significant factors to consider (as stated in section 3.2.1 of the WIPO Overview 3.0). In light of the above, the Panel finds that the Respondent deliberately registered the Domain

Name in bad faith.

The Panel also finds that the actual use of the Domain Name is in bad faith. The Website is one which has been set up to impersonate the Complainant for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Name into their browser, or finding them through a search

engine would have been looking for a site operated by the Complainant rather than the Respondent. The inevitably result due to the fact that the Website suggests that it is that of the Complainant or is sponsored or endorsed by it.

The Respondent employs the reputation of the Trade Mark to mislead Internet users into visiting the Website instead of the Complainant’s website. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Website is that of or authorised or endorsed by the Complainant. The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. The current non-use of the Domain Name does not change the Panel’s finding of the Respondent’s bad faith under paragraph 4(a)(iii) 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 Domain Name <grangerswebsite.com> be transferred to the Complainant.

/Karen Fong/ Karen Fong Sole Panelist Date: January 9, 2023