MTD Products Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1909001863166
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubcadetstore.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 20, 2019; the Forum received payment on September 20, 2019.
On September 23, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cubcadetstore.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 24, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@cubcadetstore.com. Also on September 24, 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 October 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 and manufacturers for sale to the consuming public lawnmowers, walk-behind lawnmowers, riding lawnmowers and tractors, snow throwers, snow blowers, edgers, chipper/shredders, log splitters, rear and front tine tillers, hand-held equipment and related parts. Complainant has rights in the CUB CADET trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,252,738, registered October 4, 1983). Respondent’s <cubcadetstore.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely add the generic term “store” and the “.com” generic top-level domain (“gTLD”).
Respondents has no rights or legitimate interests in the <cubcadetstore.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s trademark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent merely has the disputed domain name to offer pay-per-click hyperlinks that compete with Complainant. Furthermore, Respondent has the disputed domain name up for sale for more than the out of pocket costs of registration.
Respondent registered and used the <cubcadetstore.com> domain name in bad faith, as Respondent is attempting to sell the disputed domain name for $2,703.00. Next, this is the third UDRP complainant that Complainant has filed against the Respondent. Additionally, Respondent is attempting to disrupt Complainant’s business by offering competing hyperlinks. Furthermore, Respondent is attempting to pass off as Complainant for commercial gain by offering competing hyperlinks. Finally, Respondent has actual or constructive knowledge of Complainant’s right’s in the CUB CADET trademark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,252,738 CUB CADET (word), registered October 4, 1983 for goods in class 7;
No. 2,066,180 CUB CADET (word), registered June 3, 1997 for goods in class 7;
No. 2,068,347 CUB CADET (word), registered June 10, 1997 for goods in classes 7 and 12;
No. 2,064,410 CUB CADET (logo), registered May 27, 1997 for goods in class 7;
No. 2,062,521 CUB CADET (logo), registered May 20, 1997 for goods in classes 7 and 12;
No. 2,062,523 CUB CADET (logo), registered May 20, 1997 for goods in classes 7 and 9;
No. 3,323,679 CUB CADET (word), registered October 30, 2007 for goods in classes 7 and 12;
No. 2,064,409 CUB CADET (word), registered May 27, 1997 for goods in classes 7 and 9; and
No. 4,490,968 CUB CADET (word), registered March 4, 2014 for goods in classes 7 and 12.
Respondent registered the disputed domain name <cubcadetstore.com> on August 21, 2004.
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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules 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. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant claims rights in the CUB CADET trademark through its registration of the trademark with the USPTO (e.g., Reg. No. 1,252,738, registered October 4, 1983). Registration with the USPTO is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See 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).”). Therefore, the Panel finds that the Complainant has rights in the CUB CADET trademark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <cubcadetstore.com> domain name is confusingly similar to Complainant’s trademark as Respondent merely adds the generic term “store” and the “.com” gTLD. The mere addition of a generic term and gTLD to an otherwise recognizable trademark may not sufficiently distinguish a disputed domain name from a complainant’s trademark under Policy ¶ 4(a)(i). See 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.”). In the present case, the added generic word “store” merely indicates that the disputed domain name refers to places (stores) where the Complainant sell its products. Therefore, the Panel finds that Respondent’s <cubcadetstore.com> domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <cubcadetstore.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use the Complainant’s trademark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS of record identifies the Respondent as “Domain Privacy Guard Sociedad Anónima Ltd” and no information in the record indicates that Respondent was authorized to use Complainant’s trademark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <cubcadetstore.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <cubcadetstore.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent merely has the disputed domain name to offer pay-per-click hyperlinks that compete with the Complainant. Using a disputed domain name to offer hyperlinks that directly compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant has provided a screenshot of the <cubcadetstore.com> domain name’s resolving webpage, showing links that directly reference Complainant’s trademark, such as “Cub Cadet” and “Cub Cadet Tractors”. Therefore, the Panel find that Respondent fails to use the <cubcadetstore.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent lacks rights or legitimate interest in the <cubcadetstore.com> domain name. Specifically, Respondent is attempting to sell the disputed domain name for an excess of out of pocket costs. Attempts to sell a disputed domain name may be evidence of a lack of rights or legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Here, Complainant provided a screenshot of a domain name seller site, Afternic.com, showing that the <cubcadetstore.com> domain name is available for $2,703.00. Therefore, the Panel finds that Respondent lacks rights or legitimate interest in the <cubcadetstore.com> domain name under Policy ¶ 4(a)(ii).
Complainant argues Respondent registered and used the <cubcadetstore.com> domain name in bad faith, as Respondent is attempting to sell the disputed domain name. Offering a disputed domain name for sale in excess of the out of pocket cost may be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See 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). ”). Here, as noted above, Complainant provided a screenshot of a domain name seller site, Afternic.com, showing that the <cubcadetstore.com> domain name is available for $2,703.00. Therefore, the Panel finds that Respondent registered and used the <cubcadetstore.com> domain name in bad faith under Policy ¶ 4(b)(i).
Next, Complainant argues Respondent has a pattern of bad faith, as this is the third UDRP complainant that Complainant has filed against the Respondent. A pattern of bad faith registration may be established when a respondent has had numerous UDRP complainant leveed against it that have resulted in transfer under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains. “Of this list, 67 use the same email, support@domainp.net, as the Complainant… Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(ii)”). Here, Complainant contends a pattern has been formed as this is the third case it has brought against the Respondent and cites to the two cases in which Respondent was ordered to transfer the at-issue domain name. See MTD Products Inc v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1853793 (Forum Aug. 30, 2019); see also MTD Products Inc v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1854040 (Forum Sep. 7, 2019). Although this is not a huge amount of disputes, the Panel notes that they all relates to the Complainant’s prior rights. Therefore, the Panel finds that Respondent has a pattern of bad faith under Policy ¶4(b)(ii).
Additionally, Complainant argues that Respondent is attempting to disrupt Complainant’s business in bad faith by offering competing hyperlinks. Registration and use of a disputed domain name to offer competing hyperlinks can be evidence of bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”). Here, Complainant has provided a screenshot of the <cubcadetstore.com> domain name’s resolving webpage, showing links that directly reference Complainant’s trademark, such as “Cub Cadet” and “Cub Cadet Tractors”. Therefore, the Panel finds that Respondent is attempting to disrupt Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Furthermore, Complainant argues that Respondent is attempting to attract Internet users for commercial gain in bad faith. Specifically, Respondent is attempting to deceive Internet users into believing Respondent is affiliated with Complainant to offer competing hyperlinks. Registration and use of a disputed domain name to deceive Internet users into believing an affiliation exists between the two parties to offer competing hyperlinks can be evidence of bad faith under Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). As already noted, Complainant has provided a screenshot of the <cubcadetstore.com> domain name’s resolving webpage, showing links that directly reference Complainant’s trademark. Therefore, the Panel finds that Respondent is attempting to attract Internet users for commercial gain in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the CUB CADET trademark at the time of registering the <cubcadetstore.com> domain name. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam indicates Respondent had knowledge of the CUB CADET trademark. The Panel agrees, and finds that Respondent had actual knowledge of Complainant’s rights in the CUB CADET trademark prior to registering the disputed domain name, thus constituting bad faith registration per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cubcadetstore.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 30, 2019
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