Complainant is Schiller Grounds Care, Inc. of Southampton, Pennsylvania, United States of America, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
Respondent is Merit Rentals, Merit Hardware, Richard Centner of Bridgeport, Connecticut, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Ranger Registration (Madeira) LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 25, 2011, the Center transmitted by email to Ranger Registration (Madeira) LLC a request for registrar verification in connection with the disputed domain name. On May 25, 2011, Ranger Registration (Madeira) 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” 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 May 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for a response was June 19, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 20, 2011.
The Center appointed Michael A. Albert as the sole panelist in this matter on June 27, 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 has a trademark registration to the BOB-CAT mark, United States Reg. No. 1,155,327, registered on May 26, 1981. Since 1952, Complainant has manufactured products bearing the BOB-CAT mark and shipped them to customers in the United States, Australia, Saudi Arabia, United Kingdom, and France, among other places, and currently offers them for sale in the United States, Australia and France.
Respondent registered the disputed domain name on August 26, 2009. Respondent uses the disputed domain name to attract Internet users to a website that redirects users to sites offering competitors’ products for sale. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Complainant is the owner of the BOB-CAT trademark and common law rights associated therewith in the United States and elsewhere. Complainant contends that it began selling lawn mowers and other grounds care equipment in 1952 under the trademark BOB-CAT. Complainant also owns a number of domain name registrations incorporating the BOB-CAT mark.
Complainant contends its brand of lawn mowers has become well-known, capturing approximately 5% of the domestic mower market. Complainant manufactures products and sells them through its distributor, KPM Exceptional, LLC, to product dealers.
Beginning in 2009, Respondent was engaged as a registered dealer of Complainant’s BOB-CAT product line by KPM Exceptional, LLC. The dealer agreement prohibited the sale over the Internet to geographical regions in which the dealer has no sales, installation and/or service personnel. Respondent had received warnings from KPM Exceptional, LLC that it was in violation of Complainant’s shipping policy. Despite the warnings, Respondent continued to ship products into locations where it did not maintain sales, installation or service personnel. In approximately April 2011, KPM Exceptional, LLC learned of the disputed domain name and on May 2, 2011, delivered a letter to the principal of Respondent, formally terminating the dealer relationship for violation of the shipping policy and informing Respondent that the registration of the disputed domain name violated Complainant’s trademark rights.
Respondent asked for USD 10,000 in exchange for the transfer of ownership, notwithstanding that it had paid only USD 69 when it registered the disputed domain name in August 2009.
Complainant contends that the disputed domain name is monetized via a website that generates income for Respondent each time it is accessed. Complainant further contends that it has never received any revenue from Respondent generated by operation of this website.
Complainant contends that as a registered dealer, Respondent was fully aware of Complainant’s prior rights in the BOB-CAT mark and that Respondent had no rights in the mark even when it was a registered dealer. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “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 requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Here, Respondent provided no response, and the deadline for so doing expired on June 19, 2011. Accordingly, Respondent is in default. Given Respondent’s default, the Panel can infer that Complainant’s allegations are true where appropriate to do so. Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Nonetheless, Complainant retains the burden of proving the three requisite elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
Complainant has provided sufficient evidence that it is the owner of a valid and subsisting United States trademark registration for the BOB-CAT mark for “snow blowers and lawn mowers”.
The disputed domain name, however, is not identical to the BOB-CAT mark. Therefore, the first issue is whether the disputed domain name and the BOB-CAT mark are confusingly similar.
The disputed domain name combines three elements: (1) Complainant’s BOB-CAT mark; (2) the term “mowers”, and (3) the suffix “.com”. The relevant comparison to be made is with the second-level portion of the disputed domain name only (i.e., “BOB-CATmowers”), as it is well established that the top-level domain name (i.e., “.com”) may be disregarded for this purpose. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561.
Prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. AT&T Corp. v. William Gormally, Case No. D2005-0758 (finding confusingly similar to ATT); Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding legally identical to QUIXTAR).
Moreover, the addition of the term ”mowers” as a suffix to the BOB-CAT mark in the disputed domain name does not mitigate the confusing similarity between the disputed domain name and the BOB-CAT mark because the term “mowers” is descriptive of Complainant’s field of business. See Shaw Industries Group, Inc., Columbia Insurance Company v. VIPGeek LLC,WIPO Case No. D2010-1783 (finding confusingly similar to SHAW marks). The addition of a descriptive term does not negate the confusing similarity between the BOB-CAT mark and the disputed domain name. See Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363 (finding confusingly similar to DELL); Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046 (finding confusingly similar to TELSTRA).
For all of the foregoing reasons, this Panel finds that the disputed domain name, , is confusingly similar to Complainant’s BOB-CAT mark in which Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, paragraph 4(c), 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.
It is uncontested that Complainant has neither licensed nor otherwise authorized Respondent to use the BOB-CAT mark, or variations thereof, in connection with Respondent’s business or as part of the disputed domain name. Complainant has thus made a prima facie showing that Respondent lacks rights to the disputed domain name. Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261.
Complainant has provided uncontroverted evidence that Respondent is using the disputed domain name in a misleading manner to attract consumers looking for genuine BOB-CAT products. Prior panels have found that such offerings are not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i). See Pfizer Inc. v. jg a/k/a Josh Green,WIPO Case No. D2004-0784 (finding no bona fide use where redirected to an online pharmacy); see also Clad Holdings Corp. v. Kentech, Inc, a.k.a. Spiral Matrix a.k.a. Titan Net,WIPO Case No. D2006-0837 (“[n]or does the Respondent appear to be using the domain names in relation with a bona fide offering of goods or services… The Respondent only appears to provide links leading to websites unrelated to the Respondent where ALL-CLAD products or competing products may be purchased.”).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the disputed domain name. The evidence suggests that Respondent is using the disputed domain name for commercial benefit to misleadingly divert consumers to its website and confuse those consumers into believing that there is some relationship, sponsorship, affiliation or endorsement with Complainant, which is not the case, at least not anymore. Therefore, the Panel finds that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. One of the illustrations of bad faith, Policy paragraph 4(b)(i), occurs when circumstances indicate that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name. Another of the illustrations of bad faith, Policy paragraph 4(b)(iv), occurs when the respondent attempts to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark(s) as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or of a product or service offered on the respondent’s website.
Here, Respondent asked for USD 10,000 in exchange for the transfer of ownership notwithstanding that it had spent only USD 69 to renew the disputed domain name. Under the Policy, an offer to sell the domain name for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name can be evidence that the domain name has been registered and is being used in bad faith. Policy, paragraph 4(b)(i).
Furthermore, it is well established that using a domain name that incorporates a trademark to offer the products of competitors of the trademark owner is likely to cause confusion among consumers as to the source of products or to confusingly suggest sponsorship by the trademark owner. See Six Continent Hotels, Inc. v. The Omnicorp,WIPO Case No. D2005-1249; Exel Oyj v. KH Trading, Inc.,WIPO Case No. D2004-0433. Here, Respondent uses the disputed domain name to attract Internet users to a website that redirects users to sites offering competitors’ products for sale. The Panel finds that this use is in bad faith.
Finally, the Panel finds compelling evidence that Respondent knew of Complainant and Complainant’s BOB-CAT mark when it registered the disputed domain name. Respondent knew of the BOB-CAT mark and Complainant’s prior rights because Respondent was a distributor of products sold under the BOB-CAT mark. Although Respondent was for a time a distributor, it did not thereby necessarily acquire rights or authority to register domain names that incorporate a trademark or use the trademark without the knowledge or express permission of the trademark holder. Auntie Anne’s, Inc. v. aldhaheri business development,WIPO Case No. D2006-0995, citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Here, there is evidence suggesting that no such rights were conferred upon Respondent; and no contrary evidence from Respondent suggesting that its distributorship agreement entitled it to register the disputed domain name.
Respondent’s knowledge of Complainant and Complainant’s BOB-CAT mark is strong evidence of bad faith. Based on the foregoing, the Panel finds that Respondent registered the disputed domain name in bad faith. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“It defies common sense to believe that Respondent coincidentally selected these precise domain names without any knowledge of Complainant and its … trademarks.”); Société Air France v. R Blue,WIPO Case No. D2005-0290 (“Respondent must have been aware of the Complainant’s trademarks while registering the domain name in dispute. This finding leads to the conclusion that the domain name in dispute has been registered in bad faith.”).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent registered and is using the disputed domain name in bad faith. Therefore, the Panel finds that Complainant has proven the third and final element 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 disputed domain name be transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: July 12, 2011
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