national arbitration forum

 

DECISION

 

The Toro Company v. Texas International Property Associates - NA NA

Claim Number: FA1001001303174

 

PARTIES

Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne, of Crawford Maunu PLLC, Minnesota, USA.  Respondent is Texas International Property Associates NA NA (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toroproducts.com>, registered with Compana, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 19, 2010.

 

On January 16, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <toroproducts.com> domain name is registered with Compana, LLC and that Respondent is the current registrant of the name.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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").

 

On January 20, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2010 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 postmaster@toroproducts.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq.,  as Panelist.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <toroproducts.com> domain name is confusingly similar to Complainant’s TORO mark.

 

2.      Respondent does not have any rights or legitimate interests in the <toroproducts.com> domain name.

 

3.      Respondent registered and used the <toroproducts.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Toro Company, is an international manufacturer of lawn care products and outdoor power equipment.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TORO mark (e.g., Reg. No. 2,336,569 issued March 28, 2000). 

 

Respondent registered the <toroproducts.com> domain name on February 4, 2005.  Respondent’s disputed domain name resolves to a website that displays third party links to websites offering similar products in competition with Complainant’s business.

 

Complainant offers evidence that Respondent has a history of registering domain names that infringe on the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants.  See Int’l Olympic Comm., United States Olympic Comm. and CTV Inc. v. Texas Int’l Prop. Assocs., FA 1253280 (Nat. Arb. Forum May 6, 2009); see also Sutter Home Winery Inc. v. Texas Int’l Prop. Assoc., FA 1252751 (Nat. Arb. Forum April 30, 2009); see also Abbott Labs. v. Texas Int’l Prop. Assocs., FA 1246421 (Nat. Arb. Forum March 2, 2009).

 

DISCUSSION

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 the 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:

 

(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.

 

Identical and/or Confusingly Similar

 

Complainant has obtained multiple trademark registrations for the TORO mark with the USPTO (e.g., Reg. No. 2,336,569 issued March 28, 2000).  The Panel finds that Complainant has established rights in the TORO mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). 

 

Complainant argues that the disputed domain name <toroproducts.com> is confusingly similar to the TORO mark.  Complainant contends the only difference between the mark and the disputed domain name is the addition of the word “products” and the addtion of the generic top level domain (“gTLD”) “.com.”  The Panel finds that the addition of a descriptive word is not sufficient to distinguish the disputed domain name from the registered trademark pursuant to Policy ¶ 4(a)(i).  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks.  Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”).   Further, the Panel finds that the addition of a gTLD is not relevant in distinguishing the disputed domain name from the Complainant’s mark for purposes of Policy ¶ 4(a)(i).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Therefore, the Panel finds under Policy ¶ 4(a)(i) that the disputed domain name is confusingly similar to Complainant’s TORO mark.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.     

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once the Complainant has produced a prima facie case the burden shifts to Respondent to show they do have a right or legitimate interest in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  The Panel finds that Complainant has established a prima facie case.  Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). 

 

Complainant further contends that Respondent is neither commonly known by the disputed domain name, nor has Complainant given Respondent permission to use Complainant’s mark.  The WHOIS information for the disputed domain name does not show, and there is no further evidence on record showing, that the Respondent is commonly known by the disputed domain name.  The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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 of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent’s disputed domain name resolves to a website that displays links to websites offering goods or services for Complainant’s competitors in the lawn care and outdoor equipment business.  The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).  Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in other UDRP proceedings, where the disputed domain names were ordered to be transferred from Respondent to the respective complainant’s in those cases.  See Int’l Olympic Comm., United States Olympic Comm. and CTV Inc. v. Texas Int’l Prop. Assocs., FA 1253280 (Nat. Arb. Forum May 6, 2009); see also Sutter Home Winery, Inc. v. Texas Int’l Prop. Assocs., FA 1252751 (Nat. Arb. Forum April 30, 2009); see also Abbott Labs. v. Texas Int’l Prop. Assocs., FA 1246421 (Nat. Arb. Forum March 2, 2009).The Panel finds that Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Calvin Klein, Inc. v. Spanno Indus., FA 95283 (Nat. Arb. Forum Aug. 21, 2000) (finding that the respondent has registered numerous domain names containing sexual references and domain names which are confusingly similar to third party trademarks; which points to a pattern of conduct on the part of the respondent, revealing that the respondent is registering domain names in order to prevent trademark owners from reflecting their marks in corresponding domain names).

 

Complainant argues that Respondent’s use of the disputed domain name to attract Internet users to its website for commercial gain disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith because Respondent’s disputed domain name disrupts Complainant’s business.  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant further alleges that Respondent is using the disputed domain name to intentionally divert Internet users to Respondent’s website and that this website displays third party links to competing businesses and websites.  In this case the Panel presumes that Respondent is collecting click-through fees and is attempting to profit by creating a likelihood of confusion between the Complainant’s TORO mark and the confusingly similar disputed domain name.  The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).  Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <toroproducts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  March 8, 2010

 

 

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