Deere & Company v. Global Access
Claim Number: FA0804001180969
Complainant is Deere & Company (“Complainant”), represented by Willard
L. Boyd, of Nyemaster Law Firm,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johndeercredit.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2008.
On April 29, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <johndeercredit.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
2, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 22, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
Complainant is in the business of making and selling equipment used for agriculture, commercial and consumer land and grounds care, construction and forestry, as well as engines and components for its equipment.
In relation to this business, Complainant also offers customer financing for purchases of its products, and operates a website located at the <johndeerecredit.com> domain name.
Complainant uses the JOHN DEERE trademark in pursuit of this business, and registered the mark with the United States Patent and Trademark Office (“USPTO”) on September 21, 1897 (Reg. No. 30,580).
Respondent is not commonly known by the <johndeercredit.com> domain name, and is not authorized or licensed by Complainant to use it.
Respondent, Global Access, registered the <johndeercredit.com> domain name November 26, 2005.
The disputed domain name resolves to a website featuring Complainant’s JOHN DEERE mark and offers financing products similar to those of Complainant.
The same website also displays other third-party hyperlinks, some of which are in direct competition with Complainant’s business.
Respondent’s <johndeercredit.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark.
Respondent does not have any rights to or legitimate interests in the domain name <johndeercredit.com>.
Respondent registered and uses the <johndeercredit.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has established sufficient rights in its JOHN DEERE trademark through its registration with the USPTO under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003): “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”
Respondent’s <johndeercredit.com> domain name incorporates Complainant’s entire JOHN DEERE mark with the mere omission of the last “e” and of the space between the first and second words, and the addition of the top level domain “.com” and the descriptive word “credit,” which has an obvious relationship to Complainant’s offering of financing and credit services in connection with its business. These differences are insignificant for purposes of an evaluation as to whether the domain name is confusingly similar to Complainant’s mark because spaces are not allowed in domain names and top-level domains are required when registering a domain name. Additionally, Complainant operates a website at the <johndeerecredit.com> domain name, which varies only by the letter “e” from Respondent’s <johndeercredit.com> domain name. See, for example, Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001):
[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.
See also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a competing mark); further see Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.
Therefore, we conclude that Respondent’s domain name is confusingly similar to Complainant’s JOHN DEERE trademark pursuant to Policy ¶ 4(a)(i).
Initially Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, thereby shifting the burden of proof to Respondent to prove that it nonetheless has rights or legitimate interests in the domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.
Complainant has made a prima facie case, and Respondent’s failure to respond to the Complaint raises the presumption that it lacks rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
To the same effect, see BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000).
Despite this, we will examine the record before us to determine whether there is any basis for concluding that Respondent has such rights or interests under the provisions of Policy ¶ 4(c).
We begin by noting that there is no dispute as to
Complainant’s allegation that Respondent’s <johndeercredit.com>
domain name resolves to a website featuring links to third-party sites, some of
which are in direct competition with the business of Complainant. A panel in Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) found that “using a domain name to direct Internet
traffic to a website featuring pop-up advertisements and links to various
third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user.” Similarly, we conclude that Respondent’s use
of the domain name as alleged does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9,
2002): “Respondent is not using the disputed domain name in connection with a
bona fide offering of goods and services because Respondent is using the domain
name to divert Internet users to <visual.com>, where services that
compete with Complainant are advertised.”
See also Diners Club
Int’l Ltd. v. Car in Won
Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.
Additionally, Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <johndeercredit.com> domain name and is not authorized or licensed by Complainant to use it. Indeed, Respondent’s WHOIS contact information identifies it as “Global Access”, which does not provide any evidence that Respondent is commonly known by the disputed domain name. There is no further pertinent evidence in the record on this point. We therefore conclude that Respondent is not commonly known by the <johndeercredit.com> domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where a respondent was not commonly known by a mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is apparent that Respondent is attempting to benefit commercially from the links displayed on the website associated with the disputed domain name. It is also apparent that Respondent is attempting to capitalize on the likelihood of confusion created by its use of the domain name as to the possibility of Complainant’s affiliation and sponsorship of the resolving website. Therefore, we conclude that Respondent’s use of the domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” See also See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name was obviously connected with a complainant’s well-known marks, thus creating a likelihood of confusion for commercial gain).
The Panel therefore finds that Policy ¶ 4(a)(iii) has been established.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <johndeercredit.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 2, 2008
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