The Complainant is Kelly Tractor Co. of Miami, Florida, United States of America (“United States”), represented by Cozen O’Connor, United States of America.
The Respondent is Domain Hostmaster Customer ID: 25383214205704, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia.1 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Sea Wasp, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 13, 2018 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 amended Complaint on February 15, 2018.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint and the proceedings commenced on February 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 11, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2018.
The Center appointed Michael D. Cover as the sole panelist in this matter on March 19, 2018. 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 Kelly Tractor Co. of Miami, Florida, United States.
All that is known about the Respondent amounts to the contact details already set out in this Decision.
The Disputed Domain Name was registered on March 25, 2005, updated on February 3, 2018 and according to the evidence provided by the Complainant redirected to a website with malware. 5. Parties’ Contentions A. Complainant Confusingly Similar to a Trademark in which the Complainant has Rights
The Complainant states that it is the proprietor of various United States applications for registered trademarks, namely KELLY DRILL CENTRAL, KELLY TRACTOR and KELLY RENTAL, which are set out in Annex 3 to the Complaint.
The Complainant also states that it provides sales, service, repair, rental leasing and related financing of construction equipment and vehicles, agricultural equipment and vehicles, and related parts and accessories. The Complainant also states that it owns and operates various domain names, including , as set out in Annex 4 to the Complaint, which shows the range of goods and services offered, being rental and sale of agricultural and related equipment.
The Complainant states that it is the owner of common law rights associated with the business conducted under the trademarks set out above, including KELLY RENTAL. The Complainant sets out that the KELLY trademarks have been used in commerce since at least as early as December 31, 1933 and that the KELLY RENTAL trademark has been used in commerce since as early as December 31, 1974. The Complainant has evidenced a trademark application for KELLY RENTAL, filed on August 28, 2017, with application number 87586403, and used in commerce since December 31, 1974.
The Complainants submits that the Disputed Domain Name is identical and/or confusingly similar to the Complainant’s KELLY RENTAL trademark, in which the Complainant has rights. The Complainant submits that the Disputed Domain Name is in fact identical to the Complainant’s trademark KELLY RENTAL, which has been used in commerce since at least 1974 and respectfully submits that the Disputed Domain Name is identical and/or confusingly similar to a service mark in which the Complainant has rights. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. In particular, the Respondent does not itself own any trademark encompassing KELLY RENTAL nor any variations thereof, is not commonly known by the Disputed Domain Name and is not making legitimate noncommercial or fair use of the Disputed Domain Name.
The Complainant maintains that the Respondent has not registered the Disputed Domain Name in connection with a bona fide intent to use it, as the Respondent is not licensed by the Complainant so to do. The Complainant also submits that the Respondent is not commonly known by the Disputed Domain Name.
The Complainant states that the Respondent has not given the Respondent any authority to operate under the name KELLY RENTAL and has not given the Respondent any authority to operate, maintain or register a website under its name.
The Complainant notes that the Disputed Domain Name is being used for phishing and resolves to a website containing malware. Furthermore, the Respondent engages in an unlawful diversion of Complainant’s consumers to competitors for commercial gain.
The Complainant therefore respectfully concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Registered and Used in Bad Faith
The Complainant submits that the Disputed Domain Name has been registered and is being used in bad faith. In particular, the Complainant submits that the Respondent has registered the Dispute Domain Name primarily for the purpose of disrupting the business of a competitor. The Complainant notes that the Disputed Domain name, as already set out in this Decision, redirects to what the Complainant calls a dangerous site, which can result in system freeze and shutdown and possible virus infection.
The Complainant submits that this conduct disrupts the Complainant’s ability to do business, whereby consumers looking for the Complainant may guess at the domain name and be diverted to the website linked to the Disputed Domain Name, which is in no way affiliated with or sponsored by the Complainant. The Complainant concludes that not only must the Respondent has known of the prior use and right of the Complainant in the KELLY marks but also is using the Disputed Domain Name for the purpose of disrupting the Complainant’s business.
The Complainant concludes that the Disputed Domain Name has been registered and is being used in bad faith.
Remedy requested by the Complainant
The Complainant requests that the Panel order that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Substantive Issues
The Complainant must demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has established common law rights in its KELLY RENTAL trademark. The trademark has been in use for many years and the Complainant has accordingly established common law rights in its KELLY RENTAL trademark for the purpose of the Policy.
The Panel also accepts the Complainant’s submission that the Disputed Domain Name is in fact identical to the Complainant’s trademark KELLY RENTAL. It is well established that the addition of a Top-Level Domain (“gTLD”) or other non-distinctive element is not sufficient to avoid confusing similarity.
The Panel accordingly finds that the Disputed Domain Name is identical to the Complainant’s trademark KELLY RENTAL, in which the Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in the Dispute Domain Name. The Panel notes that the Complainant has not permitted or licensed the Respondent to use the KELLY RENTAL trademark and that the Respondent is not affiliated to the Complainant.
It is a reasonable inference that the Respondent was aware of the Complainant’s KELLY RENTAL trademark when it registered the Disputed Domain Name. The only evidence that the Respondent has used or prepared to use the Disputed Domain Name shows the Disputed Domain Name resolving to a website which the Complainant fairly describes as a phishing website. There is no evidence that the Respondent was commonly known by the Disputed Domain Name, so that route is not available to the Respondent.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy has been met. C. Registered and Used in Bad Faith
The Panel accepts the submissions of the Complainant under this head and finds that the Disputed Domain Name has been registered and is being used in bad faith. The Panel accepts that the registration of the Disputed Domain Name that is confusingly similar to the Complainant’s trademark KELLY RENTAL, combined with the use of the Disputed Domain Name to resolve to a website which is a phishing website, constitutes the registration and use of the Disputed Domain Name in bad faith.
The Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied. 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 Name be transferred to the Complainant.
Michael D. Cover
Sole Panelist
Date: April 6, 2018
1 Further to an email communication from the Center to the Registrar Sea Wasp, LLC, the
Registrar confirmed that the privacy service was updated (“has changed”) from Whois Privacy
Services Pty Ltd to P, Inc, due to a recent acquisition, but that the underlying
registrant in this case did not change.
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