The Complainant is Woods Equipment Company, United States of America (“United States”), represented by Greenberg Traurig, LLP, United States.
The Respondent is Edmond Dantes, Domains 4 Sale Today, France, represented by Nomos Studio Legale, Italy.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 1, 2021, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2022. The Response was filed with the Center on December 22, 2021. On January 20, 2022, the Complainant filed a supplemental filing to the Center, which the Panel has not admitted into the record or taken into consideration in its findings.
The Center appointed Ian Lowe as the sole panelist in this matter on January 28, 2022. 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 Complainant is a United States company founded in 1946. It has grown to become an international manufacturer and distributor of agricultural machinery and construction equipment, including tractors, throughout North America, Europe, Latin America, and Australia. The Complainant acquired Wain-Roy, Inc (“Wain Roy”) in 1997. Wain Roy has in turn been making construction equipment for almost 75 years.
The Complainant is the proprietor of United States trademark number 684757 WAIN ROY registered on September 8, 1959. It operates a number of websites providing information and promoting its products, including a website at “www.wain-roy.com”.
The Domain Name was registered on April 9, 2001. It resolves to a parking page of the Registrar that comprises a list of headings including “Excavators”, “Digger” and “Used Construction Equipment” that link in turn to webpages with pay-per-click links to a variety of third-party websites including those of competitors of the Complainant. At the time of preparation of the Complaint, on November 20, 2021, the Domain Name was offered for sale on GoDaddy Auctions for the sum of USD 65,000.
The historic WhoIs records for the Domain Name show that the registrant of the Domain Name has changed a number of times since first registration up until the Respondent became the registrant sometime after May 2019. According to the Registrar, the registrant, admin and tech name associated with the Respondent organization is Edmond Dantes. Although the Respondent’s address is in France, the registrant, admin and tech telephone number has the dialing code for North Carolina in the United States.
The records show that as at December 31, 2007 the registrant was “tractorimplement.com” and that the registrant, admin and tech name associated with the then registrant was also Edmond Dantes, with an address and telephone number in North Carolina, United States.
The Complainant contends that the Domain Name is identical to its WAIN ROY trademark (the “Mark”), 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) of the Policy.
B. RespondentIn reply to the Complainant’s contentions, the Respondent’s representative filed a letter with the Center stating that they represented the owner of the Domain Name, who resided in Italy and intended to use the Domain Name for a project it was developing there. It relied on the fact that the Complainant’s trademark was filed in respect of “WAIN-ROY” or “WAIN ROY” and not “WAINROY”.
The Response goes on to say that the owner of the Domain Name was not intentionally forwarding visitors to unidentified tractor sales websites, but that the Domain Name was parked with the Registrar that automatically sets up a portal with links through Google to indicate possible related searches.
Finally, the Respondent’s representative states that its client has owned the Domain Name for many years and, since it was not ready to use it, had parked it with the Registrar who in turn listed it for sale. Since the Respondent was tired of continuously receiving offers for the Domain Name, it recently listed a price of USD 100,000 to avoid having to deal with constant low offers. However, it says that the Domain Name is not for sale.
6. Discussion and FindingsFor 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 SimilarThe Complainant has uncontested rights in the Mark, both by virtue of its trademark registration and as a result of the goodwill and reputation acquired through its use of the WAIN ROY mark, including use by its predecessor, for almost 75 years.
Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the WAIN ROY mark. Although the Respondent relies on the fact that the trademark includes a space between “WAIN” and “ROY”, it is well settled that since a space cannot be included in a domain name, it may be ignored for the purpose of comparison between the Domain Name and the trademark relied upon.
Accordingly, the Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website with links to other webpages featuring pay-per-click links to third party websites offering products similar to those of the Complainant. There is no suggestion that the Respondent has ever been known by the Domain Name.
It has been claimed on the Respondent’s behalf that it intends to use the Domain Name for a project it is working on. However, there is no evidence of any preparatory work having been done on such a project, and no indication as to what that project might be or how any such project might give rise to any rights or legitimate interests in respect of the Domain Name. The Response does not state in terms who is the purported owner of the Domain Name and, in the absence of any evidence to the contrary, the Panel has to assume that it is the Respondent, Edmond Dantes, Domains 4 Sale Today. In the circumstances, the Respondent has failed to counter the prima facie case established by the Complainant.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad FaithThe Complainant manufactures agricultural and construction machinery, including tractors. The historic WhoIs records in respect of the Domain Name indicate a close link between the registrant of the Domain Name as at December 31, 2007, tractorimplement.com, and the current registrant. This is reinforced by the statement by the representative of the claimed owner of the Domain Name that it has owned the Domain Name for many years. In those circumstances, in light of the long-standing use of the Complainant’s Mark and its association with the Complainant’s products, and the connection between the Respondent and another domain name alluding to agricultural machinery, the Panel is satisfied on balance that the Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name.
The Domain Name has been used for pay-per-click links to third party websites. The Respondent claims that this is not a deliberate act on its part, but the result of the Registrar’s automatic creation of a parking page comprising a portal of links associated by Google with the Domain Name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) points out at section 3.5, panels have consistently held that a respondent cannot disclaim responsibility for content appearing on a website associated with its domain name, particularly with respect to “automatically” generated pay-per-click links. Furthermore, the fact that the respondent may not itself have directly profited does not prevent a finding of bad faith.
The Respondent accepts both that the Registrar has advertised the Domain Name for sale and that the Respondent recently listed the Domain Name for sale at USD 100,000. Although the Respondent’s representative claims that it was listed for sale at that price to deter constant low offers for the Domain Name when it was not in fact for sale, as noted above, in the absence of any evidence as to who may in fact be the owner of the Domain Name, the Panel has to assume that it is the named Respondent who on the face of it is in the business of acquiring and selling domain names. The Panel notes that the Domain Name is identical to the Complainant’s Mark and finds it difficult to conceive of a good faith use to which the Domain Name could be put by a third party other than the Complainant.
In those circumstances, the Panel considers that the legitimate inference is that the Respondent registered or otherwise acquired the Domain Name primarily for the purpose of selling the registration to the Complainant or a competitor of the Complainant and that in the meantime it has allowed the Domain Name to be used for a portal of pay-per-click links with a view to commercial gain, intending to attract Internet users to the webpage to which the Domain Name resolves by creating a likelihood of confusion with the Mark, and as to the affiliation or endorsement of that webpage.
The Panel considers that this amounts to paradigm bad faith registration and use for the purposes 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 Domain Name
Ian Lowe
Sole Panelist
Date: February 11, 2022