The Complainants are Tractor Supply Co. of Texas, LP and Tractor Supply Company of Nashville, Tennessee, United States of America, represented by Waller Lansden Dortch & Davis, LLP, United States of America.
The Respondent is CSRUS Enterprises of Santiago, Chile / PrivacyP of Nobby Beach, Australia. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Power Brand Center Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2011. On September 23, 2011, the Center transmitted by email to Power Brand Center Corp. a request for registrar verification in connection with the Domain Name. On September 27, 2011, Power Brand Center Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 29, 2011, adding the registrant disclosed in the verification response as the Respondent.
The Center verified that the Complaint together with the amendment to 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 September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed Antony Gold as the sole panelist in this matter on October 26, 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
The Complainants are Tractor Supply Co of Texas, LP (a Texas limited partnership) and Tractor Supply Company, a Delaware corporation. The Complainants operate a retail business known as the “Tractor Supply Company” which was founded in 1938. The Complainants’ business is said to own over a thousand retail stores and to be the leading farm and ranch business in the United States. The business trades under a number of brands, including the name “TSC”.
The Complainants own several United States trade mark registrations for the mark TSC, including registration number 894,808 for the word mark TSC and registration number 884,786 for a device mark incorporating the word “TSC”. Both registrations were filed in 1968 and cover (amongst other things) retail farm supply, hardware, automotive supply and general merchandise store services. The Complainants also own a number of domain names which are used to operate online shopping facilities, including which was registered in November 2001 and is said to have been operative since January 2002.
The first Respondent (as identified in the amendment to the Complaint), CSRUS Enterprises, is based in Chile. The Panel does not have any information about the first Respondent or its business. The Complainants have stated that the first Respondent is not an authorized licensee of any part of its business.
The Complaint also lists PrivacyP of Nobby Beach, Australia as a second Respondent. This is a business providing privacy “solutions” to domain name owners and does not have any proprietary interests in the Domain Name. Hereafter, any references to the Respondent refer only to CSRUS Enterprises.
The Domain Name was registered on July 17, 2002. The Domain Name currently connects to a website displaying a number of advertisement links to a wide range of products and services. The Complainants have stated that as of September 21, 2011, the website also included a link to the Complainants’ website. The Panel notes, however, that as at the date of this Decision, the link was not present.
The Parties did not enter into any direct correspondence regarding this dispute.
On September 22, 2011, the Complainants filed the Complaint with the Center and on September 29, 2011, filed an amendment to the Complaint. No response was received from the Respondent to communications from the Center. 5. Parties’ Contentions A. Complainants
The Complainants allege that:
(i) the Domain Name is confusingly similar to a trade mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name was registered and is being used in bad faith.
(i) The Complainants assert that the Domain Name comprises the word “TSC” which is identical to the Complainants’ registered trade marks.
The Complainants also assert that they have extensive unregistered rights in the word “TSC” (as well as in various marks not material to this decision). They state that the additional word “store” is a generic term and does not negate the confusingly similar aspects of the Domain Name in relation to the Complainants’ marks for TSC.
The Complainants also contend that the Domain Name is confusingly similar to its own domain name as it simply omits the descriptive word “my” from the Complainants’ domain name.
The Complainants assert that the Respondent’s use of the Domain Name is intentionally designed to cause confusion among consumers seeking information about the Complainants’ business.
(ii) The Complainants assert that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainants state that they have never permitted the Respondent to use the TSC brand and that the Respondent has never used the Domain Name in connection with a bona fide offering of goods or services, nor has it demonstrated preparations to do so. It further contends that the Respondent cannot, as a matter of principle, have any legitimate rights in the Domain Name because any such rights would be contrary to United States trade mark law.
The Complainants contend that the Domain Name is not being used for a noncommercial fair use purpose. The Complainants state that the Respondent is using the Domain Name (or permits the Domain Name to be used) to generate revenue by confusing customers and diverting traffic from the Complainants’ own website at “www.my” to its own website and to the third party websites accessible through the Respondent’s website. The Complainants contend that such use does not establish any legitimate interest in the Domain Name.
The Complainants further contend that there is no evidence that the Domain Name is the actual legal name of the Respondent or is commonly used to identify the Respondent.
(iii) The Complainants contend that the Domain Name was registered and is being used in bad faith.
The Complainants contend that the Respondent registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name to the Complainants or their competitors, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name. The Complainants argue that it is reasonable to make this inference, given the similarity of the Domain Name to the Complainants’ domain name and the fact that the Respondent’s website associated with the Domain Name contained a link to the Complainants’ website which Complainants say demonstrates that it is nearly inconceivable that the Respondent was not aware of the Complainants’ rights at the time it registered the Domain Name.
The Complainants also contend that the Respondent registered and holds the Domain Name to prevent the Complainants from registering it and that the Respondent has registered the Domain Name primarily for the purpose of disrupting the Complainants’ business.
The Complainants further assert that the Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ TSC mark. In this context, the Complainants rely on the close similarity of the Domain Name with the Complainants’ TSC mark and its other domain name “www.my”. Complainants state that the Respondent has chosen the Domain Name to target Internet users making typographical errors and to derive financial gain from such confusion. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a Party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the Panel shall draw such inferences there from as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainants prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(1) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(2) the Respondent has no rights or legitimate interests with respect to the Domain Name; and
(3) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainants have shown that they own United States trade mark registrations for the mark TSC as well as established unregistered rights in the word “TSC”.
For the purpose of assessing confusing similarity, a comparison must be made between the word string “” and the TSC mark. It is generally accepted that the domain name suffix (that is “.com”) is disregarded for the purpose of making a comparison. In this case, the distinctive element of the Domain Name is clearly the element “tsc” which is identical to the Complainants’ registered trade marks. The word “store” which also forms part of the Domain Name is - in the context of online retail services – purely descriptive.
Having regard to the fact that the Domain Name incorporates the Complainants’ mark in its entirety, the addition of generic and descriptive words does not prevent the Domain Name from being confusingly similar to the mark. The Panel is therefore satisfied that paragraph 4(a)(i) of the Policy is satisfied and that the Domain Name is confusingly similar to the Complainants’ TSC mark. B. Rights or Legitimate Interests
The Complainants contend that the Respondent is not licensed by the Complainants to use the TSC mark and there is no evidence to suggest that the Respondent has been commonly known by the Domain Name.
The Panel notes that the Respondent’s use of the Domain Name is not a bona fide offering of goods or services as it simply displays third party’s advertisement links. As the Respondent is using or permitting use of the Domain Name for the display of advertisement links, for which it is likely to receive income, it is not making a legitimate noncommercial or fair use of the Domain Name.
The Panel is therefore satisfied that paragraph 4(a)(ii) of the Policy is satisfied and that the Respondent has no rights or legitimate interests with respect to the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive circumstances any of which, if found by the Panel, shall be evidence of registration and use of a domain name in bad faith.
In particular, paragraph 4(b)(iv) states that if the panel finds that the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website, it should be taken as evidence of the registration and use of the domain name in bad faith.
The Panel agrees with the Complainants’ contention that the Respondent is using the Domain Name in the manner as described in paragraph 4(b)(iv) of the Policy and that the Domain Name was both registered and is being used in bad faith. Accordingly, it is not necessary to consider the Complainants’ other contentions. 7. Decision
For 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 Complainants.
Antony Gold
Sole Panelist
Dated: November 10, 2011
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