Clark Equipment Co. v. Ted
Corriher
Claim Number: FA1005001324035
PARTIES
Complainant is Clark Equipment Co. (“Complainant”), represented by Lori S. Meddings, of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Ted Corriher (“Respondent”), represented by Larry L. Coats, of Coats + Bennett, PLLC, North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobcatattachmentsonline.com>,
registered with GoDaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 11, 2010.
On May 12, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <bobcatattachmentsonline.com> domain
name is registered with GoDaddy.com, Inc.
and that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, 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”).
On May 17, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 7, 2010 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@bobcatattachmentsonline.com. Also on May
17, 2010, the Written Notice of the Complaint, notifying Respondent of
the email 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.
A timely Response was received and determined to be complete on June 7, 2010.
An Additional Submission was received from Complainant and determined
to be complete on June 14, 2010.
An Additional Submission was received from Respondent and determined to
be complete on June 17, 2010.
On June 11, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
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 <bobcatattachmentsonline> domain name is confusingly similar to Complainant’s BOBCAT mark.
2. Respondent does not have any rights or legitimate interests in the <bobcatattachmentsonline> domain name.
3. Respondent registered and used the <bobcatattachmentsonline> domain name in bad faith.
B. Respondent makes the following assertions:
1. Respondent’s use of the <bobcatattachmentsonline> domain name does not lead to confusion.
2. Respondent is making a noncommercial and fair use of the <bobcatattachmentsonline> domain name, and was doing so before notice of this dispute.
3. Respondent’s knowledge of Complainant’s trademark is not bad faith.
C. Additional Submissions:
1. Complainant concedes that
Respondent has a fair-use right
to describe its attachments as being compatible with BOBCAT brand equipment, but this does not extend
to Respondent’s use of Complainant’s federally registered BOBCAT trademark in
the disputed domain name, falsely implying that Complainant endorses or
authorizes Respondent’s goods.
Complainant also notes that, after notice of this dispute, Respondent
also registered <attachmentsforbobcat.com>, <attachmentsforbobcatskidsteer.com>
and <attachmentsforbobcatloaders.com>, undermining Respondent’s good
faith contention.
2. Respondent argues that there is no deception
in its use of the BOBCAT trademark in the disputed domain name, that there is
no confusion caused by its use, and that it does not receive click-through fees
from linked websites at <bobcatattachmentsonline>.
FINDINGS
Complainant is a leading global provider of
compact equipment for construction, landscaping and agriculture. Since 1958, Complainant has manufactured and
sold BOBCAT brand loaders, excavators and backhoes, and Complainant owns the
trademark rights and registrations for the BOBCAT mark. Complainant operates its business under
<bobcat.com>, <bobcatdealer.com>, and <bobcatstore.com>, and
offers attachments for its equipment under the mark BOB-TACH.
Respondent uses the <bobcatattachmentsonline> domain name to redirect traffic to his
business at <everythingattachments.com> where he sells attachments for
skid steer loaders in competition with Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant, Clark Equipment Co., provides compact equipment for a variety of applications including construction, landscaping, and agriculture. Complainant asserts rights in the BOBCAT mark through its numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 670,566 registered on December 2, 1958). The Panel finds that Complainant’s registrations with the USPTO sufficiently establish Complainant’s rights in the BOBCAT mark pursuant to Policy ¶ 4(a)(i). 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.”).
Respondent’s <bobcatattachmentsonline.com>
domain name is confusingly
similar to its BOBCAT mark. Respondent
adds the generic terms “attachments” and “online”, and affixes the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain
name. The Panel finds that the addition
of generic terms and a gTLD do not sufficiently distinguish a domain name from
another’s mark. See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry,
FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it). Therefore, the Panel finds Respondent’s
<bobcatattachmentsonline.com>
domain name is confusingly
similar to Complainant’s BOBCAT mark.
The Panel finds that Complainant
has satisfied Policy ¶ 4(a)(i).
The Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant states that it has not authorized Respondent to use its BOBCAT mark in a domain name and that Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Ted Corriher” as the registrant of the <bobcatattachmentsonline.com> domain name. Respondent has not alleged that he is known by the disputed domain name. Accordingly, the Panel finds Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant argues Respondent does not use
the <bobcatattachmentsonline.com> domain name for a bona fide
offering of goods or services or a legitimate noncommercial or fair use. Complainant
states that Respondent’s website contains a link called “Order Attachments
Online,” which redirects Internet users to Everything Attachments, a business
that sells skid steer attachments in competition with Complainant. Respondent admits that its business name is
“Everything Attachments.” Complainant
contends that Respondent uses the disputed domain name to profit by diverting
Internet consumers to his website. Respondent
essentially admits this. Therefore,
Respondent’s use of the <bobcatattachmentsonline.com> domain name is certainly not a noncommercial
use.
The Panel agrees with Complainant’s assertion that, although
Respondent may have a fair-use
right to describe its attachments as being compatible with BOBCAT brand
equipment, this does not give Respondent the right to use Complainant’s federally
registered BOBCAT trademark in the disputed domain name, falsely implying that
Complainant endorses or authorizes Respondent’s goods. It is Complainant alone that has the right to
identify itself as the source of BOBCAT goods, and to control the use of its
trademarks online, in domain names, and anywhere else it chooses.
The Panel finds that Respondent’s use of the
<bobcatattachmentsonline.com> domain name is not 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 Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
Respondent
confuses the
“before any notice” provision, which does not apply when a respondent registers
a domain name with knowledge of a complainant’s rights. See, e.g., Six Continents Hotels, Inc. v.
Georgetown, Inc., D2003-0214 (WIPO May 18, 2003) (finding respondent’s
knowledge of the HOLIDAY INN mark when registering
<holiday-inn-4-less.com> for third-party hotel services was not a bona
fide offering of services before notice).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the confusingly similar <bobcatattachmentsonline.com> domain name to divert Complainant’s potential customers to Respondent’s website. The Panel finds that this use disrupts Complainant’s competing business, which is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Respondent registered and used the disputed domain name to intentionally attract, for commercial gain, Internet users to its competing websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s business. Respondent profits from its use of the disputed domain name. Respondent also uses the confusingly similar disputed domain name to provide a link to Respondent’s business website, a site that offers attachment products that directly compete with Complainant’s attachment products. Complainant provides evidence that the confusingly similar disputed domain name resolves to a website that prominently displays Complainant’s BOBCAT mark. Therefore, the Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
Finally, Complainant contends that Respondent could not have registered
and used the disputed domain name without actual or constructive knowledge of
Complainant and its rights in the BOBCAT mark. Respondent does not deny having knowledge of
Complainant’s mark prior to registering the <bobcatattachmentsonline.com> domain name. Respondent does not understand that it is
indeed bad faith to knowingly misappropriate someone’s trademark in a domain
name The Panel finds that Respondent
registered and is using the disputed domain name in bad faith under Policy ¶
4(a)(iii). See Deep Foods, Inc. v.
Jamruke, LLC, FA
648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive
knowledge is insufficient to support a finding of bad faith, where the
circumstances indicate that the respondent had actual knowledge of the
complainant’s mark when it registered the domain name, panels can find bad
faith); see also Yahoo! Inc. v. Butler,
FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where
the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of
registration).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <bobcatattachmentsonline.com> domain
name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 24, 2010
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum