The Complainant is Tractor Supply Co. of Texas, LP of Nashville, United States of America, Tractor Supply Company of Nashville, United States of America represented by Waller Lansden Dortch & Davis, LLP of United States of America.
The Respondent is Private Whois Service of Nassau, Bahamas. 2. The Domain Name And Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 23, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On February 25, 2011, I Corp. 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 March 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 23, 2011.
The Center appointed Ross Wilson as the sole panelist in this matter on March 31, 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
In the United States of America (US) the Complainant is a well-known publicly traded company. It was established in 1938 and is one of the largest retail store chains in the US with 930 stores in 44 states trading in a broad range of farm and ranch equipment, products and supplies. In 2009 the Complainant’s annual net sales were over USD 3 billion and it spent USD 45.7 million in advertising its brand.
The Complainant’s design mark featuring TSC TRACTOR SUPPLY CO. was registered in the US in 1993. Its word mark TRACTOR SUPPLY CO. was registered in 2004.
The disputed domain name was registered on December 2, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has exclusive rights in the TRACTOR SUPPLY CO. marks through its registered and common law trademark and that the disputed domain name is confusingly similar to its word trademark. The Complainant considers the addition of the word “coupon” in the disputed domain name is immaterial when determining confusingly similarity to its trademark. In fact in the Complainant’s view the Respondent deliberately chose the disputed domain name to be confusingly similar to the Complainant’s mark in order to generate revenue from consumers who are searching for information and discounts from the Complainant’s stores.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because any such rights are contrary to well-established principles of trademark law and violate the Complainant’s trademark rights. The Complainant has never granted the Respondent rights to use the TRACTOR SUPPLY mark. The Complainant states that the Respondent has never used the disputed domain name in connection with a bona fide offering of goods and services. Neither is the disputed domain name being used for a noncommercial or fair use purpose. Furthermore, to the best of the Complainant’s knowledge, the Respondent has never demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods and services. Rather, the Complainant considers that the Respondent has used, and is currently using, the disputed domain name to generate revenue from traffic diverted from Complainant’s domain name to websites that compete with the Complainant.
The Complainant contends that the disputed domain name is registered and used in bad faith. The Complainant considers it inconceivable that the Respondent was not aware of the Complainant’s trademark rights at the time it registered the disputed domain name. Given the considerable presence of the Complainant in the retail industry, it asserts that it the Respondent registered and is holding the disputed domain name to prevent the Complainant from registering it and seeks to benefit from those customers searching for the Complainant’s website. The Complainant states that the Respondent is using the disputed domain name in bad faith to attract Internet users who are searching for the Complainant’s products and services and is providing links to sites promoting unaffiliated merchants and/or competitors of the Complainant that are offering goods and services almost identical to the goods and services offered by the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion And Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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. A. Identical or Confusingly Similar
The Complainant provided documentary evidence demonstrating that it has registered rights in the trademark TRACTOR SUPPLY CO.
The disputed domain name features the predominant and distinctive part of the Complainant's trademark together with the word “coupon”. The addition of the word “coupon” cannot be considered distinctive and does nothing to reduce the confusing similarity of the disputed domain name with the Complainant’s trademark. As the Complainant has pointed out the Respondent most likely deliberately chose the disputed domain name to be confusingly similar to the Complainant’s mark in order to make Internet users assume that the website linked to the domain name offers coupon discounts on the Complainant’s products.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which it has demonstrable rights. The Complainant therefore has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a respondent can demonstrate rights to or legitimate interests in a disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the disputed domain name. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Respondent has chosen to use a domain name that contains the distinctive element of the Complainant's trademark in its entirety without authorisation by the Complainant. As a consequence, the disputed domain name infers a website related to the services of the Complainant. Instead, according to the Complainant’s unrefuted allegations, the website displays sponsored links to the Complainant’s competitors which would generate revenue for the Respondent. Clearly, no rights or legitimate interests derive from this type of use of another's trademark and the Respondent is trying to benefit from the reputation of the Complainant's widely known trademark. Previous panels have held that rights and legitimate interests cannot be created where the respondent would not choose such a name unless it was seeking to create an impression of association with the complainant (see, for example, Drexel University v. David Brouda,WIPO Case No. D2001-0067).
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. In addition, the Complainant has denied having any connection with the Respondent or providing any authorisation at all. In Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055 the panel stated “[i]n the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”.
Despite the opportunity provided through this dispute process, the Respondent has chosen not to rebut the Complainant's case or assert any rights in the disputed domain name.
Based on the above, the Panel considers the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel is satisfied that the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the disputed domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of the domain name in bad faith is evidenced.
The Panel considers that the Complainant has made a case that the Respondent has registered and used the disputed domain name in bad faith.
The Complainant has provided evidence that the Respondent must have known of the Complainant's trademark at the time of registration because the website linked to the disputed domain name includes a photograph of one of the Complaint’s stores. Also, the Panel notes that the description of the range of goods and services offered on the Respondent’s website are identical to those listed on the home page of the Complainant’s website.
A search of the WIPO database indicates that the Respondent has been involved in many disputes resulting in the disputed domain name being transferred to the complainant(s). This case again demonstrates that the Respondent is a serial bad faith registrant who continues to conduct opportunistic activity by deliberate disregard of others’ trademark rights. As expressed in Singapore Airlines Limited v. European Travel Network,WIPO Case No. D2000-0641, the selection of domain names that are so obviously connected to the complainant's trademark that their very use by someone with no connection with the company suggests opportunistic bad faith. Similarly, in Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 where the respondent registered a number of domain names incorporating a well-known trademark in its entirety, the panel stated “It is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”.
Noting that the Respondent has not rebutted any of the Complainant's claims, the Panel considers that there is a strong probability that the Respondent's awareness of the Complainant's business was the motivation for registering and using the disputed domain name. Also, the Panel considers the Respondent's choice of the domain name was not merely coincidental but was a deliberate action to gain some sort of commercial advantage.
On the basis of the above, and the fact that the Respondent has no rights or legitimate interests in the disputed domain name and has a pattern of cyber squatting, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(i) and 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used 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 the Complainant.
Ross Wilson
Sole Panelist
Dated: April 14, 2011
Full & Egal Universal Law Academy