The Complainants are Tractor Supply Co. of Texas, LP, United States of America (“United States” or “US”) and Tractor Supply Company, United States, represented by Waller Lansden Dortch & Davis, LLP, United States.
The Respondent is Tian Zhang, China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2021, 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 Complainants on August 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on August 23, 2021.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2021.
The Center appointed Jane Lambert as the sole panelist in this matter on October 11, 2021. 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 BackgroundThe First Complainant is a limited partnership subsisting under the laws of Texas. The Second Complainant is a company incorporated with limited liability under the laws of Delaware. The Second Complainant is the First Complainant’s only general partner.
Notwithstanding its trade name, the First Complainant sells considerably more than tractors and tractor parts. It continues to supply equipment to farms and ranches but now distributes a wide range of goods for homes, gardens, leisure activities and pets as well as livestock. It operates a chain of 1,994 retail outlets that are located throughout the US as well as over the Internet. Its business started in 1938 and has grown steadily ever since. Its sales in 2020 were USD 10.6 billion.
Throughout that time, the Complainants traded as the TRACTOR SUPPLY COMPANY or abbreviations of that name. On January 10, 2006, the Second Complainant registered the words TRACTOR SUPPLY CO. as a service mark with the United States Patent and Trademark Office for a range of services in class 35 under registration number 3,039,473.
The disputed domain name was registered on June 4, 2021. The Respondent used the disputed domain name to offer competing or identical products as those of Complainants and as the URL for a website promoting “Rocket League” merchandise. Screen prints of those sites are annexed to the Complaint as Annexes II and K. On October 13, 2021 the Panel typed the disputed domain name into a browser and was led to a page on GoDaddy’s website where the disputed domain name had been offered for sale.
5. Parties’ Contentions A. ComplainantsThe Complainants claimed the transfer of the disputed domain name on the following grounds:
- The disputed domain name is confusingly similar to a service mark in which the Complainants have rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith.
In respect of the first ground, the Complainants refer to US service mark 3,039,473 and to a combined word and device markin Annex G. They allege that the disputed domain name is confusingly similar to those marks in that it combines the words “tractor supply” with “online”. Referring to Accor v. Domains by Proxy, Inc./Ostrid Co.,WIPO Case No. D2008-0707 and LEGO Juris A/S v. Wesley Pals,WIPO Case No. D2014-0336, they submit that the panels in those cases found that the addition of non-distinctive matter did nothing to distinguish the disputed domain name.
As to the second ground, the Complainants contend that the use of the disputed domain name without their license would contravene US trademark law. They strenuously deny that they have licensed or otherwise authorized the Respondent to register the disputed domain name. None of the circumstances set out in paragraph 4(c) of the Policy that might indicate rights or legitimate interests in the disputed domain name applies here.
With regard to the third ground, the Complainants submit that it is necessary to consider all the circumstances and that evidence of registration and use in bad faith is not limited to the circumstances catalogued in paragraph 4(b) of the Policy. Having said that, the Complainants allege that paragraph 4(b)(iv) is relevant to this case. They argue that the registration of a domain name similar to that of their service marks betokens bad faith. They allege that the Respondent has reproduced some of their copyright works and has misrepresented a connection with them.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsThe agreement for the registration of the disputed domain name incorporated by reference paragraph 4(a) of the Policy:
“Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
A. Identical or Confusingly SimilarThe first element is present.
The words TRACTOR SUPPLY CO. are registered in the United States as US service mark number 3,039,473. The Second Complainant is the registered proprietor of that mark. It is therefore a service mark in which the Complainants have rights.
The disputed domain name incorporates the words “tractor” and “supply” and combines them with the word “online”. It follows that the disputed domain name is confusingly similar to a service mark in which the Complainants have rights.
Accordingly, the disputed domain name is confusingly similar to a service mark in which the Complainants have rights.
B. Rights or Legitimate InterestsThe second element is present.
The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainants have emphasized that they have not licensed, authorized or acquiesced in the registration of the disputed domain name. They have considered each and every one of the circumstances in paragraph 4(c) of the Policy but have found no evidence that any of the circumstances in that paragraph applies to this case. The Complainant has therefore made out a prima facie case that the Respondent lacks rights or legitimate interests.
The Respondent has had an opportunity to come forward with relevant evidence demonstrating rights and legitimate interests in the disputed domain name but has failed to use that opportunity. It follows that the Complainant is deemed to have satisfied the second element.
C. Registered and Used in Bad FaithThe third element is present.
Paragraph 4(b) of the Policy provides:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.”
The circumstances in paragraphs 4(b)(i) and 4(b)(iv) appear to apply to this case.
Subparagraph (i) includes:
“circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.”
Currently, the disputed domain name is offered for sale on the GoDaddy website. It can therefore be inferred that he registered or acquired the disputed domain name primarily for selling it to the Complainant or one of the Complainant’s competitors for a profit in excess of his out of pocket costs.
Further or alternatively, subparagraph (iv) applies to the following acts:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The similarity of the disputed domain name to the registered mark is confusing in that at least some Internet users would mistakenly conclude that the disputed domain name was intended to be the URL for a retail site operated by the Complainants.
The Respondent used the disputed domain name to offer competing or identical products as those of Complainants and included the Complainants' TRACTOR SUPPLY CO. Mark on the top of the website. After that, the website associated with the disputed domain name changed its content and displayed materials associated with “Rocket League” branded video games. Those pages offered merchandise for sale and they had a link marked “payment & shipping”. It is clear beyond peradventure that the Respondent used the disputed domain name in an attempt to attract Internet users to that website for commercial gain. The different uses of the disputed domain name, including the implied affiliation with the Complainants, amount to bad faith.
The advertisement on the GoDaddy site and the used shown in Annexes II and K of the Complaint constitute evidence of registration and use in bad faith for the purposes of paragraph 4(a) of the Policy.
7. DecisionFor 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
Jane Lambert
Sole Panelist
Date: October 18, 2021