The Complainant is CNH America LLC of Racine, Wisconsin, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.
The Respondent is UnderHost Networks Ltd of Trois-Rivieres, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2013. On July 11, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar 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 July 12, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2013.
The Center appointed Ian Lowe as the sole panelist in this matter on August 8, 2013. 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 Complainant is a leading agricultural and construction equipment manufacturer and supplier, with more than 33,000 employees working in offices located in approximately 170 countries. Since at least 1940, including through its predecessors, the Complainant has been using the mark NEW HOLLAND in connection with its agricultural and construction equipment products and related services. It has made sales of goods and services under the mark NEW HOLLAND to the value of billions of dollars.
The Complainant is the registered proprietor of numerous trademarks comprising NEW HOLLAND in the United States, Canada, the European Union and many other countries. These include United States trademark No. 642,298 NEW HOLLAND registered on March 5, 1957 and European Community trademark No. 8240831 NEW HOLLAND registered on February 1, 2010.
As a result of extensive marketing efforts and substantial sales, the NEW HOLLAND marks have become very well-known and have accrued very substantial goodwill associated with and owned by the Complainant.
The Domain Name was acquired by the Respondent on July 2, 2013. At the date of filing of the Complaint, the Domain Name resolved to a website displaying the Complainant’s trademarks and offering for sale copies of manuals for New Holland tractors and other equipment (the “Website”). The home page featured a logo incorporating the NEW HOLLAND trademark, a photograph of New Holland digging machinery and text beginning: “New Holland is global brand of agricultural and construction machinery produced by CNH Global.” 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its NEW HOLLAND trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Ignoring the suffix “.org”, the Domain Name comprises the entirety of the trademark NEW HOLLAND in which the Complainant has undoubted, widespread rights, together with the generic term “tractor”. This additional term does not detract from the distinctiveness of the NEW HOLLAND mark but in the view of the Panel serves to increase the likelihood of confusion with the Complainant’s trademark since it is one of the products sold by the Complainant. The Panel therefore finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint. The Domain Name resolves to a website that offers for sale what the Complainant contends to be unauthorized copies of the Complainant’s manuals for its various agricultural and construction equipment products. The Complainant states that the Respondent is not authorized to use the Complainant’s trademark, and in light of the nature of the Website there can be no doubt that the Respondent had the Complainant in mind when it acquired the Domain Name. The Panel finds that the Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in the Domain Name. In the absence of a Response, there is no rebuttal of this strong prima facie case. The Panel cannot conceive of any such rights or legitimate interests.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
As a result of the incorporation of the NEW HOLLAND trademark into the Domain Name, the use on the Website of the trademark and the references to the Complainant, it is inevitable that a substantial number of users will be misled into believing that the Website is operated by the Complainant or otherwise authorized by the Complainant. In light of the nature of the Website, the Panel considers that the Respondent is using the Domain Name to attract users to the Website for commercial gain. In the view of the Panel, this amounts to paradigm bad faith use for the purposes of the Policy.
The Respondent has not come forward with any response to the Complainant or, therefore, advanced any justification for its registration or use of the Domain Name. In circumstances where the Website offers for sale copies of manuals purporting to deal with the Complainant’s products, and the Respondent must have had the Complainant in mind when it acquired the Domain Name, the obvious conclusion is that the Respondent acquired the Domain Name in bad faith.
In the circumstances, the Panel finds that the Respondent registered the Domain Name and has used the Domain Name in bad faith. 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 Complainant.
Ian Lowe
Sole Panelist
Date: August 21, 2013
Full & Egal Universal Law Academy