WIPO Domain Name Decision D2009-0704 for tractorsupplies.name, tractorsupply.name

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tractor Supply Co. of Texas, LP and Tractor Supply Company v. Guisheng Fang Case No. D2009-0704 1. The Parties

The Complainants are Tractor Supply Co. of Texas, LP and Tractor Supply Company (“Complainants”), of Tennessee, United States of America (“United States”), represented by Waller Lansden Dortch & Davis, LLP, United States. Complainant Tractor Supply Company, a Delaware corporation, is the sole general partner of Complainant Tractor Supply Co. of Texas, LP, a Texas limited partnership.

The Respondent is Guisheng Fang (“Respondent”), of Hagerstown, Maryland, United States. 2. The Domain Name and Registrar

The disputed domain names and (the “Disputed Domain Names”) are registered with GoD, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2009. On May 29, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 29, 2009, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On June 5, 2009, 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.

In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 5, 2009. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 25, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on June 26, 2009.

The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on July 2, 2009. 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

Complainants, or their predecessors-in-interest, have been doing business in the United States since 1938 under the service mark TRACTOR SUPPLY COMPANY. Over the years, as Complainants' business grew, several variations of the TRACTOR SUPPLY COMPANY service mark, including TRACTOR SUPPLY, TRACTOR SUPPLY CO., and TSC (the “TRACTOR SUPPLY Marks” or “TRACTOR SUPPLY Brand”), have been adopted. Complainant Tractor Supply Co. of Texas LP is the owner of the TRACTOR SUPPLY Marks, which it licenses to Complainant Tractor Supply Company.

Relevant to this matter, in particular, Complainant Tractor Supply Co. of Texas LP is the owner of United States Trademark Registrations Nos. 3,039,473 for TRACTOR SUPPLY CO., registered January 10, 2006 and claiming a first use date of 1938, and 1,846,015 for TSC TRACTOR SUPPLY CO. & Design, registered July 19, 1994. The former registration covers “retail store services in the field of animal care, home improvement, recreation, and apparel; retail store services in the field of automotive accessories, namely batteries, lubricants, tarps, truck toolboxes, trailers, towing parts, and fuel tanks; retail store services in the field of maintenance equipment, namely air compressors, welders, generators, pumps, electrical products, plumbing, and paint; retail store services in the field of lawn and garden products, namely seed and bulbs, fertilizer, windmills, and yard accessories” in International Class 35. The latter registration covers “retail stores featuring hardware; automotive supplies; household supplies; apparel; pet foods and pet supplies; farm supplies; swimming pool supplies and lawn care equipment; and mail order catalog services featuring hardware; automotive supplies; pet foods and pet supplies; farm supplies; namely, fencing, livestock feeds, mineral supplements, livestock feeders and waterers, veterinary supplies, rope and twine; sprayers; pumps; paints and painter's supplies; air compressors; welders and welding supplies; and electrical and gas heaters” in International Class 42. Since 1999, Complainants have also registered and used the domain name in connection with the aforesaid services.

Complainants' business, Tractor Supply Company, is a well-known publicly traded company with annual net sales of over USD three billion in 2008. Tractor Supply Company operates more than 800 retail stores throughout more than 40 states in the United States. In fact, one of Tractor Supply Company's stores, opened in April 2002, is located in Hagerstown, Maryland, approximately five miles from Respondent's registered address for the Disputed Domain Names.

The TRACTOR SUPPLY Brand is the leading farm and ranch store brand in the United States. In 2008 alone, Complainants spent USD 58 million to promote and advertise the TRACTOR SUPPLY Brand.

Respondent first registered each of the Disputed Domain Names with the Registrar on July 11, 2007, more than 65 years after Complainants' TRACTOR SUPPLY Marks were first used in the United States, and more than 8 years after Complainants began using . Complainants provided evidence that Respondent is using the Disputed Domain Names for commercial purposes, namely, to provide “click-through” links to various websites, including links to websites of Complainants' competitors that promote and sell farm-related and ranch-related goods and services. 5. Parties' Contentions A. Complainants

In their Complaint, Complainants contend that their TRACTOR SUPPLY Marks are widely known to consumers to identify specifically Tractor Supply Company's chain of retail stores and that they have acquired widespread consumer goodwill by virtue of nearly 70 years of widespread use. Complainants further contend that they have invested substantial time, expense, and effort in the creation of goodwill and recognition regarding the TRACTOR SUPPLY Marks and allege that they have consequently acquired valid and far-reaching common law trademark rights therein. In support of their Complaint, Complainants point to the previously referenced U.S. trademark registrations, as well as their common law rights in the TRACTOR SUPPLY Marks and the domain name , and allege that their marks are distinctive in the minds of relevant consumers as identifying Complainants' goods and services.

Complainants contend the Disputed Domain Names are confusingly similar to their TRACTOR SUPPLY Marks and allege that they are identical or confusingly similar to Complainants' primary domain name . Complainants contend that the substitution of the generic top-level domain “.name” does not negate the confusing similarity to Complainants' TRACTOR SUPPLY Marks. Complainants also contend that these types of domain names are typically registered to generate revenue from consumers' mistakes or to be held for sale to the relevant trademark owner. When combined with the fact that the Disputed Domain Names contain links promoting goods and services that are nearly identical to those offered by Complainants, Complainants assert that it is clear that Respondent registered these particular domains precisely because of their confusing similarity to Complainants' TRACTOR SUPPLY Marks and domain name.

In addition, Complainants contend that Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainants contend that there is no evidence that the Disputed Domain Names are the actual legal names of Respondent or that they are names that are commonly used to identify Respondent. Furthermore, Complainants contend that they have never granted Respondent rights to use the TRACTOR SUPPLY Marks. Complainants also contend that Respondent has never used the Disputed Domain Names in connection with a bona fide offering of goods or services, nor has Respondent even demonstrated preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. Complainants further contend that Respondent is using the Disputed Domain Names to attract confused customers of Complainants and to divert those customers to websites that compete with Complainants. Moreover, Complainants contend that because Respondent is using the Disputed Domain Names to redirect consumers to other commercial websites for profit, Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names.

Finally, Complainants contend that Respondent registered and is using the Disputed Domain Names in bad faith. In support of this contention, Complainants offer several potential bases. Among these, Complainants assert: (1) that Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to Complainants or to a competitor of Complainants; (2) that Respondent is holding the Disputed Domain Names to prevent Complainants from registering them and is benefiting from those customers searching for Complainants' website; and (3) that Respondent, by registering and using the Disputed Domain Names that include Complainants' TRACTOR SUPPLY Marks, intends to divert users attempting to access Complainants' website in order to offer them goods and services similar to those sold by Complainants. In short, Complainants contend that Respondent is exploiting Complainants' federally protected and common law trademark rights in the TRACTOR SUPPLY Marks for Respondent's own benefit and commercial gain. Complainants also contend that, given the close proximity of Complainants' store to Respondent's registered address and the similarity of the Disputed Domain Names to Complainants' own website, it is nearly inconceivable that Respondent was not aware of Complainants in registering the Disputed Domain Names. On the other hand, Complainants contend, based upon a letter Complainant addressed to Respondent, which was returned as “undeliverable,” that the contact information provided by Respondent is incorrect and is additional evidence of Respondent's bad faith. Lastly, Complainants contend that the fact that Respondent has registered at least two slight variations of Complainants' domain name is further evidence of Respondent's bad faith. B. Respondent

Respondent did not reply to Complainants' contentions. 6. Discussion and Findings

The Panel's jurisdiction is limited to a determination of whether Complainants have proved the necessary elements of a claim for transfer or cancellation of each of the Disputed Domain Names under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, the Policy, Paragraph 4(a), requires Complainants to prove each of the following:

(i) that the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) that Respondent has no rights or legitimate interests in the domain names; and

(iii) that the domain names registered by Respondent have been registered and are being used in bad faith.

In view of Respondent's failure to submit a Response, the Panel will decide this administrative proceeding based on Complainants' undisputed allegations for which there is support, pursuant to the Rules, Paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, Paragraph 14(b). A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Names are confusingly similar to Complainants' TRACTOR SUPPLY Marks. The Panel first notes that the owner of a descriptive or generic trademark or service mark, whether registered or unregistered, holds a right to exclude others that is far more circumscribed than if the mark is fanciful. See, e.g., Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635 (addressing the complainant's mark CLASSMATES). The registrant of a descriptive mark may have more limited rights to exclude others from using such term, under both United States trademark law and the Policy. Ciphergen Biosystems v. David Sabatini,WIPO Case No. D2002-0600. But, in view of Respondent's failure to submit a response, Respondent has neither challenged Complainants' asserted first use dates nor the distinctiveness of the TRACTOR SUPPLY Marks.

It is well-settled that the Policy is applicable to unregistered marks. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 (finding that the Policy is applicable to unregistered trademarks and service marks). Common law trademark and service mark rights exist when a party proves that there is enough goodwill and reputation in and to a name and sufficient association of the same with the party itself. Id. Complainants assert that they have continuously used the TRACTOR SUPPLY Marks, which include the mark TRACTOR SUPPLY, for several decades. Complainants have invested substantial time, expense, and effort in the creation of goodwill and recognition regarding the TRACTOR SUPPLY Marks. And customers have come to recognize these marks as identifying Complainants and their goods and services. Accordingly, based on the evidence provided, the Panel finds that Complainants also hold valid common law service mark rights in, among others, the mark TRACTOR SUPPLY. Again, by failing to file a response, Respondent has not contested Complainants' common law service mark rights in, among others, the TRACTOR SUPPLY mark.

The Disputed Domain Name consists of Complainants' TRACTOR SUPPLY mark in its entirety and the addition of the generic top-level domain “.name”. Furthermore, it is essentially identical to Complainants' registered domain name , in which Complainants also assert common law service mark rights. Likewise, the Disputed Domain Name consists of the Complainants' TRACTOR SUPPLY mark, albeit in its plural form, and the addition of the generic top level domain “.name”.

The Panel finds that the Disputed Domain Name is confusingly similar to Complainants' TRACTOR SUPPLY mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). The Panel also finds that the Disputed Domain Name is confusingly similar to Complainants' TRACTOR SUPPLY mark. The Panel considers that this plural form is virtually identical to the Complainants' mark. As stated by the panel in i2 Technologies Inc v. Richard Alexander Smith,WIPO Case No. D2001-0164, “it is trite law and basic common sense that the mere change from singular to plural or vice versa is not sufficient to avoid confusion for trade mark purposes or passing off purposes.” Moreover, with respect to both of the Disputed Domain Names, the use of the top level domain “.name” does not change the identical or similar nature of the mark. It is well established in many panel decisions that suffixes such as “.com”, “.org”, or “.net” should not be taken into account when considering the issue of identity or confusing similarity. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (stating that “the addition of the generic top-level domain (gTLD) name ‘.com' is . . . without legal significance since use of a gTLD is required of domain name registrants”).

For these reasons, the Panel concludes that the Disputed Domain Names are confusingly similar to the TRACTOR SUPPLY mark, a service mark in which Complainants have rights. B. Rights or Legitimate Interests

Under the Policy, rights or legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, Paragraph 4(c).

The burden of proving the absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of proof passes to the respondent to show that it does indeed have such a right or interest. See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

Complainants contend that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal.

Nothing in the record suggests that Respondent is commonly known by either of the Disputed Domain Names or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. In fact, Complainants have offered evidence that Respondent has used the Disputed Domain Names to re-direct Internet users to other websites offering farm-related and ranch-related goods and services in competition with Complainants' goods and services. Furthermore, Complainants have asserted that Complainants have never granted Respondent rights to use any of the TRACTOR SUPPLY Marks for this or any other purpose. Respondent's use of the Disputed Domain Names to provide links to goods and services that are related to those of Complainants does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick's Foundation Inc. v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through' scheme does not serve to establish a bona fide offering of goods or services”).

Furthermore, the undisputed record indicates that Respondent registered the Disputed Domain Names more than 65 years after Complainants' established rights in the TRACTOR SUPPLY Marks through use and more than 8 years after Complainants began using . Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainants and their business when Respondent registered the Disputed Domain Names and that Respondent deliberately incorporated Complainants' TRACTOR SUPPLY mark in the Disputed Domain Names in order to suggest an association between the Disputed Domain Names and Complainants.

In short, there is simply no evidence in the record from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Names.

The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in Paragraph 4(c) of the Policy, of proof of legitimate interest by Respondent in the Disputed Domain Names, likely do not exist.

For these reasons, in accordance with the Policy, Paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Names. C. Registered and Used in Bad Faith

Complainants also argue that Respondent registered and is using the Disputed Domain Names in bad faith. Complainants have submitted evidence that the Disputed Domain Names resolve to an advertising portal with links to farm-related and ranch-related goods and services. In other words, Respondent appears to have used the Disputed Domain Names in order to intentionally trade on the goodwill in the TRACTOR SUPPLY mark and to attract traffic to other websites for commercial gain (pay-per-click revenue), which previous panels have concluded may support a finding of bad faith. See St. Baldrick's Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through' sites, can be considered to be evidence of bad faith.”); Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 (“[T]he practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.”).

As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainants and their business when Respondent registered the Disputed Domain Names, which evidences bad faith on Respondent's part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

Moreover, the Panel is further convinced of Respondent's bad faith because, in the absence of any response from Respondent, the Panel finds it doubtful that there is any legitimate reason for Respondent's choice of the Disputed Domain Names incorporating Complainants' TRACTOR SUPPLY mark.

Furthermore, the Panel finds that Respondent's registration of one domain name consisting exclusively of the TRACTOR SUPPLY mark and of another domain name consisting of a slight variation of the TRACTOR SUPPLY mark is further evidence of Respondent's bad faith.

In short, in this case, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Names in bad faith. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case. 7. Decision

For all the foregoing reasons, in accordance with the Policy, Paragraph 4(i), and the Rules, Paragraph 15, the Panel orders that the Disputed Domain Names and be transferred to Complainants.

Steven M. Auvil
Sole Panelist

Dated: July 16, 2009

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