MTD Products Inc. v. DVLPMT MARKETING, INC.
Claim Number: FA1907001854003
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus of 151 Innovation Drive, Suite 260G, Ohio, USA. Respondent is DVLPMT MARKETING, INC. (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troybiltgenerators.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 26, 2019; the Forum received payment on July 26, 2019.
On July 26, 2019, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <troybiltgenerators.com> domain name (the Domain Name) is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@troybiltgenerators.com. Also on July 31, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant designs, manufactures, and sells outdoor power equipment worldwide. Complainant has rights in the TROY BILT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 850,181, registered June 4, 1968). Respondent’s Domain Name is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety, merely adding the generic term “generators” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not affiliated with Complainant and Complainant has not authorized it to use its mark in any way. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use because the web site resolving from it contains pay-per-click links, and Respondent is offering to sell the Domain Name for $2,133.00. Respondent is not commonly known by the Domain Name.
Respondent registered and is using the Domain Name in bad faith. Respondent’s registration of the Domain Name prevents Complainant from reflecting its mark in the Domain Name, Respondent had actual or constructive knowledge of Complainant and its rights in its mark when it registered the Domain Name, and Respondent registered the Domain Name primarily to disrupt Complainant’s business. Finally Respondent is attempting for commercial gain to attract Internet users to its web site by causing confusion as to the source, sponsorship, endorsement or affiliation of its web site.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 4.3, eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The TROY-BILT mark was registered to Watco Machine Products, Inc. with the USPTO (Reg. No. 850,181) on June 4, 1968 and was subsequently assigned to Complainant (Amended Complaint Exhibit A). A complainant’s registration of its mark with the USPTO is sufficient to establish its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As assignee and current owner of the TROY-BILT mark, Complainant has sufficient rights in that mark to bring and maintain this proceeding.
Respondent’s <troybiltgenerators.com> Domain Name is confusingly similar to Complainant’s TROY-BILT mark as it incorporates that mark verbatim, merely eliminating the hyphen, and adding the generic term “generators” and the “.com” gTLD. These changes are not sufficient to distinguish the Doman Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”), Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the TROY-BILT mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to Respondent of the dispute, Respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not affiliated with Complainant and Complainant has not authorized it to use its mark in any way, (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use because the web site resolving from it contains pay-per-click links and Respondent is offering to sell the Domain Name, and (iii) Respondent is not commonly known by the Domain Name. These allegations are addressed as follows:
Complainant states that Respondent is not an affiliate or licensee of Complainant, and that Complainant has never licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit D is a screenshot of the web site resolving from the Domain Name. It is a parking page which displays hyperlinks for “Cheap Electricity,” “Gas Powered Generators,” “Generac generators,” “Electricity Generators” and the like, which presumably redirect the visitor to other sites offering these types of products. Respondent is obviously using the Domain Name for a commercial site hosting pay-per-click links to sites related to generators. Complainant has at least one registered trademark for electric generators (Registration No. 1,286,866 registered May 1, 1964) (Amended Complaint Exhibit A), so some of these sites undoubtedly compete with Complainant. Using a confusingly similar domain name to host such links does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services), Correct Craft IP Holdings, LLC v. Katz, FA1711001757990 (FORUM Dec. 6, 2017) (finding no bona fide offering of goods or services nor a legitimate noncommercial or fair use when the disputed domain name resolved to a website hosting, in part, hyperlinks to third-party websites that were unrelated to the complainant).
The information furnished by the registrar (Amended Complaint Exhibit C) lists the registrant of the Domain Name as “DVLPMT MARKETING, INC.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such or similar evidence, however, UDRP panels have consistently held that a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name), Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). There is no evidence before the Panel to suggest that Respondent has been commonly known by the Domain Name, and the Panel finds that it has not been so known.
Finally, the landing page for the Domain Name (Amended Complaint Exhibit D) also contains a message “This domain name may be for sale” followed by a link to another web site. Clicking on that link takes the visitor to the web site of an entity named afternic, which offers numerous domains for sale (Amended Complaint Exhibit F). Foremost among them is the Domain Name, which is being offered for $2,133.00. Offering to sell a confusingly similar domain name does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s web site or location or of a product of service on Respondent’s web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights or legitimate interests analysis also supports a finding of bad faith use and registration of that domain, based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, Respondent is offering the Domain Name for sale for some $2,133.00, an amount clearly in excess of the normal and usual out-of-pocket costs directly related to a domain name. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(i) and is evidence of bad faith registration and use. loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶4(b)(i).”).
Second, Respondent is using the Domain Name to offer links to businesses that compete with Complainant. This diverts business from Complainant and disrupts Complainant’s business. Respondent’s conduct thus fits also within the circumstances articulated by Policy ¶ 4(b)(iii) and is evidence of bad faith registration and use. Artisan Partners Holdings LP v. Privacy Gods, FA1702001719182 (Forum April 14, 2017) (“Respondent registered and uses the . . . domain name in bad faith because Respondent uses the disputed domain name to resolve to a website which displays . . . links to Complainant’s competitors. Such behavior disrupts Complainant’s business and demonstrates bad faith under Policy ¶ 4(b)(iii).”)
Third, Respondent is clearly using the Domain Name to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site, as described in Policy ¶ 4(b)(iv). Respondent is obtaining commercial gain from its use of the Domain Name and the resolving web site. Pay-per-click sites are common on the Internet. Under the most common forms of business arrangements relating to these sites, when a visitor to Respondent’s site clicks on one of the links which appear there, Respondent receives compensation from the various web site owners who are forwarded from the site. Most likely, Respondent receives compensation based upon the number of hits the web site owners get from being linked to Respondent’s web site. AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Respondent’s use of the Domain Name is commercial also because the various companies forwarded from the web sites benefit from the subsequent interest and purchases of those who visit the sites. UDRP panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Finally, Complainant asserts that Respondent had constructive or actual knowledge of Complainant and its mark when it registered the Domain Name. Arguments of bad faith based on constructive notice are not well-taken, however, as UDRP panels have most frequently declined to find bad faith based upon constructive knowledge. The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Nevertheless, it is evident from the notoriety of Complainant’s TROY-BILT mark, from Respondent’s copying that mark verbatim into the Domain Name, and from Respondent’s web site redirecting Internet traffic to businesses which operate in the same industry as Complainant that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in June 2005 (information furnished by the registrar submitted in Amended Complaint Exhibit C shows registration date). Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering a confusingly similar domain name with actual knowledge of a complainant’s rights in its mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <troybiltgenerators.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
August 23, 2019
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