WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Terex Corporation v. Texas International Property Associates - NA NA
Case No. D2008-0733
1. The Parties
Complainant is Terex Corporation, Westport, Connecticut, United States of America.
Respondent is Texas International Property Associates - NA NA, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name, is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2008. On May 13, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On the same date, Compana LLC transmitted by email to the Center its verification response confirming that 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”), 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2008. The Response was filed with the Center on June 8, 2008.
On June 10, 2008, Complainant submitted a supplemental filing. On June 20, 2008, Respondent submitted an objection and a reply to Complainant’s supplemental filing.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 23, 2008. 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.
The Panel declined to accept or to receive either Complainant’s supplemental filing or Respondent’s objection and reply thereto. Neither filing was considered for any purpose.
4. Factual Background
Complainant is the world’s third-largest manufacturer of construction and mining equipment. Complainant’s net sales for the year 2007 were USD 9.1 billion. Complainant manufactures a broad range of equipment for use in the construction, infrastructure, quarrying, surface mining, shipping, transportation and utility industries, as well as offering a complete line of financial products and services to assist in the purchase of its equipment.
Complainant is the owner of more than 100 trademarks in approximately 80 countries or geographic regions. Complaint, Annex 4. The earliest registration of a mark with the United States Patent & Trademark Office was for the mark TEREX. The trademark issued on July 9, 1985, and showed a first use in commerce of October 11, 1968. Complaint Annex 3.
Respondent is a d/b/a for Dauben, Inc., a corporation of which Joseph “Joey” Dauben is president, allegedly located in Dallas, Texas 75237 United States of America. Microsoft Corporation v. Dauben, Inc. d/b/a Texas International Property Associates, Civil Action No. 3:08-CV-0098-L, United States District Court for the Northern District of Texas, Dallas Division, Defendant’s Initial Disclosures, served on April 8, 2008. Respondent registered the domain name at issue on May 7, 2007. Complaint, Annex 1.
Respondent uses the domain name at issue to resolve to a parking site with links to direct competitors of Complainant. Complaint, Annex 5. When contacted by Complainant, Respondent, on November 14, 2007, offered to voluntarily transfer the domain name to Complainant. Complaint, Annex 6. After the transfer was not made, Complainant initiated the present proceeding.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s TEREX marks, that Complainant has never granted permission or in any way authorized Respondent to use Complainant’s mark and that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and is using the domain name in bad faith in that Respondent is using the domain name at issue to resolve to a parking site with links to third-party sites offering services directly competitive to those offered by Complainant.
B. Respondent
Respondent offers its standard template response in which it offers a “unilateral consent to transfer” without admitting any of the three elements under the Policy.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s mark, the added generic abbreviation for “corporation”: “corp”, and the gTLD suffix “.com”. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. N a.k.a. IBCC, WIPO Case No. D2000-0102 (); Eauto L.L.C. v. Net Me Up,WIPO Case No. D2000-0104 (). The Panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and notes in that regard that Complainant has not authorized Respondent’s use of the domain name. Respondent has consented to transfer of the registration of the domain name at issue and has not asserted any rights or legitimate interests in respect of the domain name at issue, which the Panel takes as an acknowledgment that Respondent has no rights or legitimate interests in respect of the domain name at issue. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue. C. Registered and Used in Bad Faith
Respondent is a serial cybersquatter, as in more than 40 UDRP cases involving Respondent, all of which found against Respondent. Having recently had a number of cases involving Respondent, the Panel is compelled to agree. In all of these recent cases Respondent effectively used a template response, substituting names and dates that were unique to a particular case. Each case included the same language and case citations in consenting to the transfer of the domain name without admitting that Respondent acted in bad faith and without conceding any of the three elements which must be established under the Policy. Respondent consistently requests that the transfer be compelled without consideration of the three factors which must be found to compel transfer or cancellation. This Panel cannot condone Respondent’s conduct in such manner. In the present case, as in all the others involving Respondent with which this Panelist has dealt, Respondent has acted in bad faith.
The use of the domain name on a parking site with links to Complainant’s competitors indicates that Respondent must have known of Complainant and the services that Complainant offered.
Respondent is using the domain name at issue to resolve to a web site at which links to Complainant’s competitors are listed. Respondent is obviously deriving income from such links on a pay-per-click basis. This is a violation of paragraph 4(b)(iv) of the policy and constitutes bad faith registration and use. ACCOR v. Steve Terry/North West Enterprise, Inc.,WIPO Case No. D2006-0649.
Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Dated: June 30, 2008
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