WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Tractor Supply Co. of Texas LP and Tractor Supply Company v. S / Troy Rushton Case No. D2010-0795 1. The Parties
The Complainants are Tractor Supply Co. of Texas LP, of Texas, United States of America and Tractor Supply Company of Nashville, Tennessee, United States, represented by Waller Lansden Dortch & Davis, LLP, United States.
The Respondent is S / Troy Rushton of Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain names , and are registered with eNom, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2010. On May 19, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name . On May 19, 2010, eNom 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2010. On June 8, 2010, the Complainants filed a Supplemental Filing with the Center. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on June 30, 2010. 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.
As noted above, on June 8, 2010, prior to the Panel's appointment, the Center confirmed receipt of a Supplemental Filing from the Complainants to the Parties. The Center responded to the Complainants and noted that paragraphs 10 and 12 of the Rules give the Panel the sole discretion to determine the admissibility of the Supplemental Filing. In this case, the Panel has decided to consider the Supplemental Filing from the Complainants. As further discussed below, the Panel believes that the powers enumerated under paragraphs 10, 12 and 15 of the Rules permit them to consider this submission. 4. Factual Background
The Complainants in this instance are Tractor Supply Co., a limited partnership in Texas and Tractor Supply Company, a Delaware corporation which serves as the sole general partner of Tractor Supply Co. For over seventy years, the Complainants have operated a chain of retail stores specializing in, among other things, the supply of products for agriculture and farming, livestock, lawn, garden and home improvement needs. As evidenced by the accompanying Annexes, the Complainants hold a number of rights to the TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO service marks. The Complainants also have rights to a number of domain names, including , , and .
As evidenced by a WhoIs database search of eNom, Inc., the concerned registrar, the Respondent is S and is registered out of Sydney, Australia. According to the WhoIs database search, the disputed domain name of was registered on April 28, 2010.
For the purposes of the Complainants' Supplemental Filing, a WhoIs database search indicated that the domain names of and were both created on May 26, 2010 and registered with the Respondent in addition to the domain name . 5. Parties' Contentions A. Complainant
The Complainants have operated a retail business specializing in the supply of products for agriculture and farming, livestock, lawn and garden, home improvement as well as a number of other areas since as early as 1938. The Complainants' business has grown from a small mail order parts business to a successful retail business with over 900 retail outlets across the United States and annual revenues exceeding 3 USD billion.
The Complainants note that they have utilized the TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO service marks in their business for over seventy years and have attained good will with these service marks. The Complainants also own a number of domain names in connection with the service marks, including , , and .
As evidenced by Annexes J and K, the Complainants registered TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO as service marks on July 19, 1994 and January 10, 2006 respectively. The Complainants also note that the widespread use of the TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO service marks in their business even before registration, has resulted in common law rights to the service marks. As a result, the Complainants contend that they have an exclusive right to utilize the service marks as well as the right to prevent others from using the same.
In this case, the Respondent registered the disputed domain name of on April 28, 2010, which was a number of years after the official registrations of TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO. This was also many years after the Complainants began operations. The Complainants aver that the disputed domain name is confusingly similar to the Complainants' marks because it incorporates “tractor supply”, the predominant feature of both TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO, into the domain name. The Complainants note that the non-distinctive term “world” as well as the incorporation of hyphens into the disputed domain name should be disregarded. The combination of this led the Complainants to believe that the Respondent's use of the disputed domain name is intentionally designed to cause deception and mistake amongst Internet users and consumers. As a result, the domain name of is confusingly similar to a mark in which the Complainants have rights.
The Complainants also allege that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants have never granted the Respondent the right to use either the TSC TRACTOR SUPPLY CO or TRACTOR SUPPLY CO service marks. The Respondent has also not evidenced that it has ever been known or associated with either TSC TRACTOR SUPPLY CO or TRACTOR SUPPLY CO. Additionally, the disputed domain name of is not being used in connection with a bona fide offering of goods or services or for a non-commercial or fair use purpose.
Currently, the Complainants allege that the Respondent is using the disputed domain name to generate revenue from traffic diverted from the Complainants' websites to a number of other various websites. Some of those websites are those of the Complainants' competitors. The Complainants allege that the Respondent is also perpetuating further confusion by promoting and displaying the products of the Complainants themselves alongside the products of their competitors. As a result, the Complainants argue that such a use, as well as the act of redirecting Internet users to other websites for profit, is not a legitimate or fair use of the disputed domain name.
With respect to the bad faith registration and use element under the Policy, the Complainants note that a panel must look at the “totality of the circumstances”. In arguing that the disputed domain name was registered in bad faith, the Complainants are arguing that, due to the Complainants' scope of business and market presence, it was inconceivable that the Respondent was unaware of the Complainants and their marks at the time of registration. As a result, the Complainants are arguing that the Respondent's primary motivation in registering and using the disputed domain name of was to prevent the Complainants from registering the same, as well as to resell the disputed domain name for a profit.
The Complainants aver that since the products of the Complainants have been incorporated on the Respondent's website, that the Respondent must have been aware of the Complainants and its business at the time of registration on April 28, 2010. Therefore, the Respondent has clearly sought to target and disrupt the business of the Complainants. This fact, combined with the subsequent use of the Complainants products and marks within the disputed domain name, evidences the intent of the Respondent to divert customers and Internet users from the websites of the Complainants. Thereafter, the Respondent's intent was to capitalize on that confusion for its own commercial gain. The use of a domain name to promote goods that are both identical, and in some cases the Complainants own products, constitutes a bad faith use.
On June 8, 2010, the Complainants submitted a Supplemental Filing to the Center seeking to incorporate two additional domain names into their present Complaint. The Complainants allege that on May 26, 2010 the Respondent registered and in addition to .
The Complainants allege that the Respondent is using the two additional disputed domain names in precisely the same manner as . As a result, the arguments presented by the Complainants in their original Complaint would apply here. The Respondent is using the additional domain names for commercial purposes and is promoting both the products of the Complainants, as well as their competitors. The Complainants are of the opinion that since and are being used by the same Respondent and for the same purpose, that the additional domain names should be added to their original Complaint. The Respondent has also not responded to the Complainants' original Complaint.
The Complainants contend that based on the facts above as well as principles of efficiency that the additional domain names should be consolidated into the original Complaint. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
In accordance with the Rules, a panel is required to render its decision on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. (Rules, paragraph 15(a)).
Additionally, in each case a complainant must establish each element of paragraph 4(a) of the Policy, which are as follows:
(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 respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064.
The Panel believes that there are two preliminary issues that must be assessed in this case prior to rendering its decision. The first issue concerns the Complainants' Supplemental Filing on June 8, 2010. In accordance with paragraph 10 of the Rules, the Panel has the authority to consolidate multiple domain name disputes in accordance the Policy and the Rules. The Panel is also entrusted with the power to determine the admissibility of the Supplemental Filing as well as what weight to give it under the paragraph 10 and other provisions of the Rules.
In this case, the Panel will consider the Complainants' Supplemental Filing. Presently, the Complainants seek to add the domain names and to their Complaint. The Panel finds support in the Complainants' argument as to why the additional domain names should be included. In this case, the additional domain names are registered with and by the same Respondent. A review of the publicly available WHOIS data revealed that the majority of contact information for the registrants of these additional disputes domain names are identical or almost identical to the registrant data for . The Respondent is utilizing the additional domain names in the same manner as . Finally, the Complainants contend that the factual basis for their claims remains exactly the same with respect to and .
The Panel finds support in the Complainants' arguments and their references to previous panel decisions. Taking into account its powers and role under the Rules, the lack of response from the Respondent and the similarity in registrant data, as well as notions of efficiency and expediency, the Panel believes that consolidating the disputes into one hearing is the proper course. As a result, the Panel has decided to consolidate the disputed domain names into one decision.
One other factor to be addressed upfront is the identity of the Complainant. As stated above, the Complainants in this instance are Tractor Supply Co., a limited partnership in Texas and Tractor Supply Company, a Delaware corporation which serves as the sole general partner of Tractor Supply Co. Based on the evidence presented in the Annexes, the Panel finds that the relationship between the two entities is sufficient for the purposes of enforcing their rights under the Policy. As a result, the Panel has no objection to proceeding with Tractor Supply Co. and Tractor Supply Company acting as joint Complainants. A. Identical or Confusingly Similar
In arguing its case under the Policy, the Complainants have alleged that the disputed domain names of , and are confusingly similar to the TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO marks that the Complainants have rights to.
In addition to evidence demonstrating that the Complainants have operated their business for over a half century, the Complainants have evidenced in Annex J and K to the Complaint that they obtained registered rights to TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO in 1994 and 2006 respectively. In addition, the Complainants have evidenced that they hold rights to the domain names of , , and , the use of which has in some cases gone back over a decade.
In this case, the disputed domain names of , and incorporate, as the Complainants aver, the “predominant” portion of the TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO service marks. The Panel must assess whether the partial incorporation of the Complainants' service marks is sufficient to establish that the disputed domain names are confusingly similar to a service mark in which the Complainants have rights.
In this case, the phrase “tractor supply” consists of two seemingly generic words. However, in this case, the Complainants have evidenced that they have rights to this combination of words as evidenced by Annexes J and K to the Complaint, as well as through the various domain name registrations incorporating the phrase “tractor supply”. Therefore, while the words “tractor” and “supply” are generic, the combination of these words is sufficiently distinctive to acquire trademark status as evidenced by the agreement of the trademark registrars to the registration of the Complainants' service marks.
The Panel agrees with the Complainants contention that the hyphens within and are immaterial for the purposes of this test. See The Leading Hotels of the World Ltd. v. Online Travel Group,WIPO Case No. D2002-0241; AT&T v. WorldclassM; AT&T Corp. v. WorldclassM, WIPO Case No. D2000-0553. Additionally, the non-distinctive and descriptive terms “world”, “guide” and “central” are immaterial for the purposes of this test. As past panels have held, the incorporation of a geographic term or name, without more, cannot serve to save an identical or confusingly similar trademark from remaining the same. See TPI Holdings, Inc. v. Autobuyline,WIPO Case No. D2000-1546. The Panel finds in this case that the terms “world” and “central” would qualify as a geographical terms. In this case, when the words “world” and “central” are added to the end of the phrase “tractor supply”, the Panel concludes that the addition does not distinguish the disputed domain names from the brand in the mind of the consumers. See The Leading Hotels of the World Ltd v. Interdynamic S.A.,WIPO Case No. D2001-1435.
Likewise, the Panel finds that the term “guide” is a descriptive term that does not affect the finding that a domain name is confusingly similar to the Complainants' service marks. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700. The Panel also disregards the addition of the “.com” suffix as an irrelevant distinction that does not alter the likelihood of confusion. VAT Holding AG v. V, WIPO Case No. D2000-0607.
Here, the Respondent has incorporated the predominant portion of the Complainants' registered service marks of TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO into each of the disputed domain names. Therefore, based on the above, the Panel finds that there is sufficient evidence to conclude that the disputed domain names are confusingly similar to the Complainants' service marks and that Complainants have met their burden under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainants are next required under paragraph 4(a)(ii) of the Policy, to make a prima facie showing that the Respondent lacks rights or a legitimate interest in the disputed domain names. Once the Complainants have presented their case in this regard, the Respondent thereafter has the burden of evidencing to the Panel that it has rights to or a legitimate interest in the disputed domain names. See Belupo d.d. v. WACHEM d.o.o, WIPO Case D2004-0110. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that the respondent can use to demonstrate that they possess rights or a legitimate interest in the disputed domain name. Additionally, the absence of rights or legitimate interests can also be established if a complainant makes out a prima facie case and the respondent enters no response. See De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005.
In this case, the Complainants have clearly evidenced that they possess a number of rights to both TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO as well as a number of domain names incorporating variations of the same. The Complainants have operated their business for over seventy years. The Complainants' earliest service mark registration was made in 1994. The earliest domain name registration of occurred in 1997. The disputed domain name of was not registered until April 28, 210. Additionally, and were not registered until May 26, 2010. Both dates were well after the registration of the Complainants' service marks and domain names.
The Complainants have also not provided the Respondent with any license or right to use the TSC TRACTOR SUPPLY CO or the TRACTOR SUPPLY CO service marks. The Respondent has not responded to the Complainants allegations, and by not doing so, has failed to evidence that it was commonly known by, associated with, or had a right to use the Complainants' service marks.
At present, the Panel is unable to access the disputed domain name of . However, the Complainants have included a number of screen shots of in the Complaint. The Panel was able to access both and . In each case, the landing pages were virtually identical. For each of the disputed domain names, the landing pages contain a number of “pay-per-click” links to a number of websites selling or auctioning similar goods to that of the Complainants. In some cases, the links also appear to be associated with the Complainants or involve the products of the Complainants. This pattern is reflected in the main landing page, the auction page, as well as under the news portion of each of the disputed domain pages. The gallery potion of the Respondent's websites also includes photographs of the Complainants' products and businesses.
Taken together, the Panel finds that there is sufficient evidence to conclude that the Respondent is not using the disputed domain names for a legitimate, non-commercial or fair use. The Respondent is also not using the disputed domain names in connection with a bona fide offering of goods and services. The Panel has already noted that the Respondent has not demonstrated that it has any right to use the Complainants' service marks.
Based on the Respondent's screen shots of , and , it is clear that the Respondent is not making a legitimate non-commercial use of the domain names. In this case, the links are “pay-per-click” links that redirect Internet users to other Internet sites. For each domain name, the “pay-per-click” links resolve to links relating to goods sold by both the Complainants as well as its competitors. The Panel finds that, based on the above evidence, there is sufficient proof of an intent to utilize the disputed domain names for commercial gain.
The disputed domain names are also confusingly similar to a service mark in which the Complainants have rights, and contain links to products being sold by the Complainants and news relating to the Complainants and include pictures of the Complainants products and businesses. As a result of these similarities, the Panel finds that there is a clear danger that consumers will be misleadingly diverted and would associate the disputed domain names with the Complainants.
In this case, the Respondent's use of the “pay-per-click” links would not be considered a bona fide use of the domain names. In past panel decisions, it has been held that if the “pay-per-click” links on a landing page are based on the generic value of the domain name and do not implicate any trademark rights, such use may be considered bona fide. See National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141. If, however, the links were targeted to the trademark name and the services offered by the complainant, such use would not constitute a fair or legitimate use. See Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006. Here, it is clear that a number of links involve the Complainants as well as the products sold by the Complainants. As a result, the Panel finds that the “pay-per-click” links do not constitute a bona fide use of the disputed domain names.
Based on the above, the Panel finds that the Respondent's use of the disputed domain names is commercial in nature, and no legitimate interests or bona fide use of the disputed domain names exist.
As a result the Panel finds that the Complainants have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The final element under paragraph 4(a)(iii) of the Policy requires the Complainants to evidence that , and have been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration, but in the same manner as paragraph 4(c), this list is not exhaustive. In addition to the instances under paragraph 4(b), a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
A portion of the Complainants' argument under paragraph 4(a)(iii) of the Policy relates to paragraphs 4(b)(i) and 4(b)(ii) of the Policy. Under paragraph 4(b)(i) the argument is that the Respondent's motivation for registering the disputed domain name was to resell it to the Complainants. For paragraph 4(b)(ii), the argument is that the Respondent's registration of the disputed domain names were done to prevent the Complainants from reflecting the mark in a corresponding domain name. Although there is no clear intent or evidence from the Respondent to resell the disputed domain names to the Complainants, the Complainants Supplemental Filing has strengthened their argument that the Respondent is “typosquatting”. In this case, the Respondent has registered three domain names all incorporating a predominant portion of the Complainants' service marks. As past cases have held, such a pattern without any other motive apart from disrupting the business of the Complainant constitutes bad faith registration. See Time Warner Entertainment Company, L.P. v. HarperStephens,WIPO Case No. D2000-1254.
In addition to the above contentions, the Panel finds additional support in the Complainants' arguments under paragraph 4(b)(iii) and more so under paragraph 4(b)(iv) of the Policy. Under paragraph 4(b)(iv) of the Policy, the Complainants must evidence that the Respondent registered the disputed domain names in an attempt to intentionally attract, for commercial gain, Internet users to the domain names by creating a likelihood of confusion with the Complainants' marks. Under the Policy, such a finding can be considered evidence of both bad faith registration and use of the domain names.
In this case, the Complainants' business has been in operation for over seventy years and has grown to be a very successful business. The service marks of TSC TRACTOR SUPPLY CO and TRACTOR SUPPLY CO were registered in 1994 and 2006 respectively. The Complainants' domain names, many of which incorporate the Complainants' service marks, were all registered prior to the disputed domain names. The disputed domain names were not registered until April 28, 2010 and May 26, 2010 respectively.
In addition to incorporating the predominant portion of the Complainants' service marks, the disputed domain names contain numerous references to the Complainants and their business. These references include news relating to the Complainants, “pay-per-click” links to products of the Complainants, as well as photographs of the Complainants' products and businesses. Not only were products of the Complainants being sold, but products of its competitors were being offered as well.
Based on the above, it is clear, on balance of probabilities, that the Respondent registered , and in an attempt to attract, for commercial gain, Internet users to the domain names. By using the Complainants' service marks and products on its domain names, the Panel finds sufficient evidence to conclude that the Respondent is misleadingly representing itself as being associated with the Complainants and their business. As such, this attempt to benefit commercially from the reputation of another party's well-known trade or service marks is prohibited. See I, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
As a result, the Panel is able to conclude based on the preponderance of the evidence that the disputed domain names were registered and were being used in bad faith by the Respondent. Accordingly the Panel finds that the Complainants have met the requirements of paragraph 4(a)(iii) of the Policy. 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 names , and be transferred to the Complainants.
Nasser A. Khasawneh
Sole Panelist
Dated: July 14, 2010
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