Complainant is CHN Industrial America LLC of Racine, Wisconsin, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Terry Burkart, All States Ag Parts of Urbandale, Iowa, United States of America. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, LLC and Go France Domains, Inc. (the "Registrars"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2015. On September 23, 2015, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On the same day the Registrars transmitted by email to the Center their verification responses 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 20, 2015.
The Center appointed Martin Schwimmer as the sole panelist in this matter on October 22, 2015. 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.
The Panel issued Administrative Panel Procedural Order No. 1 on November 11, 2015, indicating that, although notice had been transmitted to all Respondent contact details in the WhoIs records for the disputed domain names, in the specific circumstances of this case the Center was to exceptionally provide email and fax notice of this proceeding to additional contact details discovered by the Panel.
In response, Respondent notified the Center that day that it wished to "pursue these domains" and requesting guidance on "what the next step needs to be."
The Panel issued Administrative Panel Procedural Order No. 2 on November 16, 2015, providing Respondent with ten additional calendar days to submit a Response, and providing Complainant with five calendar days from the receipt of any Response to submit comments addressing, in addition to the subjects below, any issues raised in the Response that could not have been reasonably anticipated at the time the Complaint was filed. The Parties were further advised to, in their filings, (i) advise as to the relationship between the Parties, if any and (ii) provide documentation as to how the Domain Names have been used since the beginning of this dispute.
Respondent did not file a further response. 4. Factual Background
Complainant owns incontestable trademark rights in the marks NEW HOLLAND and CASE IH, which it uses in connection with, among other goods, agricultural equipment parts (the "Marks"). It has used the NEW HOLLAND mark since 1940, and the CASE IH mark since 1990. Respondent sells NEW HOLLAND and CASE IH parts. It obtained the disputed domain names and on September 14, 2015. The disputed domain names do not appear to resolve at this time, but in the past have resolved to registrar parking pages with "sponsored links", some of which are to businesses apparently competitive with Complainant. 5. Parties' Contentions A. Complainant
Complainant owns numerous registrations worldwide for the Marks, including incontestable U.S. registrations.
Complainant has not licensed or otherwise permitted Respondent to use Complainant's marks or to apply for or use any domain names incorporating or simulating these marks. Respondent is not commonly known by the Marks.
In view of Complainant's reputation in the Marks, Respondent had actual or constructive notice of Complainant's rights. B. Respondent
In an informal communication, Respondent alleged that "We sell used tractor and combine parts. Included in these parts are original oem parts from caseih and newholland." (sic). 6. Discussion and Findings
The Panel believes introductory remarks regarding notice may be useful in this instance.
The Respondent Organization in this dispute is All State Ag Parts. The administrative email address listed in the WhoIs records for the disputed domain names was […]@. It took the Panel very little time to determine that All State Ag Parts operated a website selling agricultural parts at "www.", and in fact promoted inter alia CASE IH and NEW HOLLAND (but also competing) parts on its home page.
Disputes that present potential instances of fair use, such as those that involve resellers of trademarked goods, are more factually complex than the vast majority of UDRP disputes. The Oki Data principles (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903) are nuanced. The Panel would rather decide such disputes on a full record, rather than by relying on presumptions and negative inferences.
A complainant is well-advised to provide a UDRP panel with a factual record commensurate with the complexity of a given case. In this instance, the Panel was not assisted by the Complaint, which may fairly be described as "generic" as it was not customized for this dispute. In particular, Complainant did not address Respondent's use of Complainant's Marks on its "www." home page, instead addressing the issue of Respondent's knowledge using boilerplate language ("Respondent had constructive, and potentially actual, notice of [Complainant's Marks]." (Complaint, paragraph 16)). This calls into question whether Complainant appropriately examined the facts of this dispute.
In view of these deficits, the Panel saw fit via its first Administrative Order to request that the Center make additional attempts at notifying the Respondent. Respondent did in fact respond, as quoted in Section 5.B. supra (using the email address first utilized by the Center), however he did not provide a further response to the second Administrative Order. The Panel will consider the contents contained in his informal response. In any event, given the summary nature of this communication and that it was unresponsive to the allegations in the Complaint, the Panel is now satisfied that this should in effect be treated as a default, warranting the use of presumptions and negative inferences. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names are confusingly similar to the Marks. The disputed domain names incorporate Complainant's NEW HOLLAND and CASE IH Marks in their entirety. 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 trademark (AT&T Corp. v. William Gormally,WIPO Case No. D2005-0758).
Normally, it is standard practice by UDRP panels to disregard the generic Top-Level Domain ("gTLD") suffix in this regard. In this case, the ".parts" suffix seems rather to increase the likelihood that the disputed domain names are confusingly similar to the Marks. B. Rights or Legitimate Interests
The second legal ground to be demonstrated by Complainant, according to the provisions of the Policy, is Respondent's absence of any rights or legitimate interests in the disputed domain names, per paragraph 4(c) of the Policy or otherwise.
Previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines, d.d. v. Modern Empire Internet Limited,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the domain name.
The rationale for burden-shifting is that important information relevant to this inquiry, such as whether the respondent has made demonstrable steps towards bona fide use, is in the hands of the respondent. It would be unfair in this limited non-discovery context to place the burden on the complainant to "prove that which it cannot know." Having said that, it is not unfair that the complainant prove what it can know.
As noted above, Complainant alleges that it has not licensed or otherwise permitted Respondent to use its Marks. Respondent's use of the Marks on "www." (a domain name not subject to the present dispute) possibly calls into question, but doesn't rebut, this allegation. In view of Respondent's failure to respond to the Panel's specific inquiry in Administrative Panel Procedural Order No. 2 regarding the relationship between the Parties, the Panel is comfortable that shifting the burden to Respondent on this factor is appropriate. Respondent has not rebutted Complainant's prima facie case.
Further, the record in this case does not support a finding that Respondent has rights or legitimate interests in the disputed domain names by virtue of any resale activities.
The multi-part Oki Data test is described in paragraph 2.3 of the WIPO overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, as follows:
"Consensus view: Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder...Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark."
The Panel submits that the Oki Data test illustrates the difference between trademark infringement and abusive registration of domain names, as that term is understood under the UDRP. It can certainly be argued that the reflection of a trademark in a domain name, without distinguishing material, suggests authorization or endorsement of a respondent by the trademark owner on its face, and thus, without regard to the content of the respondent's underlying website, any use of such a domain name would exceed trademark fair use. However, as this Panel's jurisdiction is to determine whether abusive domain name registration (and not trademark infringement) has occurred, it finds the Oki Data principles appropriate criteria for the present analysis.
Turning to the application of the Oki Data criteria to the present case, while the Panel's independent investigation has uncovered that Respondent is using a domain name not subject to this dispute to resell Complainant's products, nothing in the record indicates that Respondent has used or has made demonstrable preparations to use the disputed domain names for resale activities that would satisfy the Oki Data criteria. The uses made of disputed domain names, described in the Factual Background, supra, do not give rise to rights or legitimate interests.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Complainant has easily established that it owns rights in its Marks. Further, as Respondent sells Complainant's parts, there is no question as to Respondent's knowledge of Complainant's rights in the Marks.
Complainant did not provide allegations or exhibits as to the manner in which Respondent made use of the disputed domain names prior to receiving any protest from Complainant. The Panel takes notice that during the pendency of this dispute, it has periodically checked the status of the disputed domain names, and that the disputed domain names either didn't resolve or resolved to generic pages of links created by the registrars. These pages displayed "sponsored listings" that lead to, among other things, advertisements for agricultural equipment parts that appear to compete with those of Complainant. Respondent has not utilized its opportunity to demonstrate whether this is a fair representation of its use of the disputed domain names; in any event, it is Respondent who is ultimately responsible for such content. .
The Panel notes that the passive holding of a domain name reflecting a trademark in which a respondent is aware of the complainant's prior rights has frequently been found to support an inference of bad faith. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Accordingly, the Panel finds that the disputed domain names have been registered and are being used 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 disputed domain names and be transferred to the Complainant.
Martin Schwimmer
Sole Panelist
Date: December 3, 2015
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