Complainant is Ariens Company of Brillion, Wisconsin, United States of America, represented by Quarles & Brady LLP, United States of America.
Respondent is URDMC LLC of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with F. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2010. On December 20, 2010, the Center transmitted by email to F a request for registrar verification in connection with the disputed domain name. On December 21, 2010, F 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 Complainant on January 4, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. In response to this invitation and a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on the same day, January 4, 2011.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 6, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 27, 2011.
The Center appointed Jeffrey D. Steinhardt as sole panelist in this matter on February 2, 2011. 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
Complainant is owner of the GRAVELY trademark, United States Trademark Registration Number 2,376,777, used in association with lawn mowers among other things. The First Use of Complainant’s GRAVELY trademark as noted by Complainant’s United States trademark registration dates back to 1922. Complainant also owns and uses the domain name which was registered in 1995, along with other registered trademarks containing the term “Gravely.”
The disputed domain name was registered on November 28, 2004 and presently routes to a landing page displaying links to third-party websites promoting products of Complainant and products of Complainant’s competitors.1 5. Parties’ Contentions A. Complainant
Complainant alleges that “[i]n the last five years, Complainant has sold in excess of [USD] 450,000,000 dollars of outdoor power equipment, including tractors and lawn mower products, under its GRAVELY mark in North America alone . . . . ”
Complainant details its trademark rights, but the Complaint’s legal allegations respecting the first requirement under paragraph 4(a) of the Policy are limited to the statement that “[t]he domain name WWW.GRAVELYMOWERS.COM contains Complainant’s valuable GRAVELY trademark.”
In a brief manner, the Complaint also alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
Complainant’s factual statements in support of the latter two elements of the Policy are limited, speculating that Respondent intended to confuse consumers and pointing out that the website to which the disputed domain name routes contains sponsored links to lawnmower and tractor products. The Complaint adds that “[u]pon information and belief, Respondent has registered the WWW.GRAVELYMOWERS.COM domain primarily for the purpose of disrupting the business of Complainant. By registering the domain name Respondent is not allowing Complainant to use the WWW.GRAVELYMOWERS.COM domain to advertise, promote and sell its products.” 2
On the basis of the above, Complainant requests transfer. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Rules require the Panel to decide a complaint 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). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini,WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009). A. Identical or Confusingly Similar
The Complaint states simply that the disputed domain name contains the GRAVELY trademark. As noted above, the UDRP requires, however, that the disputed domain name be identical or confusingly similar to a mark in which Complainant has rights. Policy, paragraph 4(a)(i). The Panel has considered this question and concludes that the disputed domain name is confusingly similar, as described below.
Panels disregard the domain name suffix in evaluating identity or confusing similarity. E.g., VAT Holding AG v. VAT.com,WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315.
Removing the suffix, the disputed domain name wholly incorporates the GRAVELY trademark and adds a word descriptive of goods that have been associated with the trademark. The Panel concludes that the addition of the descriptive term “mowers” does not negate the confusion created by Respondent’s complete inclusion of the GRAVELY trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-Aventis Deutschland GmbH v. Andrey Mitrofanov,WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc.,WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner,WIPO Case No. D2006-0629. In fact, given that Complainant’s mark is associated with mowers, the Panel finds that the addition of the term “mowers” to Complainant’s mark simply increases the confusion that Internet users would experience. ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“[c]onfusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
The Panel finds, therefore, that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests in a disputed domain name, after which the burden of rebuttal passes to the respondent. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005).
Respondent’s website presently displays links to third-party websites promoting products including Complainant’s products, as well as the products of others. By diverting traffic to third parties and their products, the Panel finds that Respondent is using Complainant’s marks for its own commercial purposes. See, e.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See also Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya ILtd, WIPO Case No. D2006-1079.
In the absence of a response, the Panel accepts as true Complainant’s allegations that Respondent has no authorization to use the GRAVELY mark in its domain name and that Respondent is not commonly known by the disputed domain name. Respondent is seeking to attract Internet users through Complainant’s mark for Respondent’s own commercial purposes.
The Panel therefore finds that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name. See, e.g., Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784. The Panel also finds there is no bona fide offering of goods or services by Respondent and that the Complaint makes out a prima facie case.
Filing no response, Respondent has not rebutted Complainant’s prima facie case or invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established by the record before it.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including the failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
The Panel infers that the disputed domain name was registered with awareness of Complainant and its business for the following reasons: (1) the GRAVELY mark was registered in 1962 (with a first use in commerce in 1922), and (2) Complainant’s website “www.” promotes mowers and the domain name was registered in 1995. The Panel’s inference that registration of the disputed domain name was made with awareness of Complainant’s rights is further supported by the content of Respondent’s website, which includes commercial references to Complainant’s products.3
The Panel finds therefore that the domain name registration was made with the intention of trading on the value of Complainant’s trademark. The Panel concludes that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Under the circumstances, this constitutes registration in bad faith for purposes of the Policy.
The Panel also concludes that the circumstances show bad faith use of the disputed domain name, as elaborated below.
Respondent’s website shows that the disputed domain name is used not only to promote sales of Complainants’ products, but also to promote the products of competitors. The Panel concludes that this activity evidences bad faith use by Respondent. Pfizer Inc. v. jg a/k/a Josh Green, supra (citing Google, Inc. v. and Jimmy Siavesh Behain,WIPO Case No. D2000-1240; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim,WIPO Case No. D2003-0400; Downstream Technologies, LLC v. Bartels System GmbH,WIPO Case No. D2003-0088). Respondent’s decision to refrain from filing a response to the Complaint provides further support for the Panel’s finding of bad faith.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) 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 name be transferred to Complainant.
Jeffrey D. Steinhardt
Sole Panelist
Dated: February 7, 2011
1 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, section 4.5.
2 The Panel has added italics to signal language in the Complaint taken from paragraph 4(b)(iii) of the Policy. The Panel notes, however, that the quoted section of the Policy refers to “competitors,” not “Complainants.” There is no substantial development of this ground in the Complaint, nor does it appear that Complainant attempted before institution of these proceedings informally to contact Respondent to recover the disputed domain name. In light of the Panel’s disposition of this proceeding on other grounds, it is unnecessary to consider further the allegations of disruption to Complainant’s business or Respondent’s alleged intention to prevent Complainant from using the disputed domain name to advertise, promote and sell its products.
3 This inference is not based on the Complaint’s summary assertion that GRAVELY is a “famous” mark; while it is certainly conceivable that this may be the case, the Complaint provides no proof to support that assertion.
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