Deere & Company v. Colema Boards
Claim Number: FA1006001332187
Complainant is Deere & Company (“Complainant”), represented by Robert W. Hoke, Iowa, USA. Respondent is Colema Boards (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <johndeeretoys.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2010.
On June 29, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <johndeeretoys.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, 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 July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@johndeeretoys.com by e-mail. Also on July 7, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 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.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
1. Respondent’s <johndeeretoys.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark.
2. Respondent does not have any rights or legitimate interests in the <johndeeretoys.com> domain name.
3. Respondent registered and used the <johndeeretoys.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Deere & Company, was founded in 1837 and manufactures farm, forestry, and construction equipment. Complainant operates in 160 countries. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its JOHN DEERE mark (e.g., Reg. No. 30,580 issued September 21, 1897).
Respondent, Colema Boards, registered the <johndeeretoys.com> domain name on November 24, 2001. The disputed domain name resolves to a hyperlink directory website that features hyperlinks to Complainant’s competitors in the farm, forestry, and construction equipment industry.
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.
Complainant owns numerous trademark registrations with the USPTO for its JOHN DEERE mark (e.g., Reg. No. 30,580 issued September 21, 1897). Thus, the Panel determines that Complainant has established rights in its JOHN DEERE mark for purposes of Policy ¶ 4(a)(i).
Respondent’s <johndeeretoys.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name removes the space separating the terms of Complainant’s JOHN DEERE mark, adds the descriptive term “toy,” which describes Complainant’s toy replicas of its farm, forestry, and construction equipment, and adds the generic top-level domain (“gTLD”) “.com.” These changes all fail to sufficiently distinguish the disputed domain name from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Consequently, the Panel concludes that Respondent’s <johndeeretoys.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the<johndeeretoys.com> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <johndeeretoys.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <johndeeretoys.com> domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent has failed to present any evidence that would suggest that Respondent is commonly known by the disputed domain name. Complainant claims that Respondent was not authorized or licensed to use Complainant’s JOHN DEERE mark. The WHOIS information, which identifies the domain name registrant as “Colema Boards,” does not indicate that Respondent is commonly known by the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <johndeeretoys.com> domain name under 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).
Complainant alleges that Respondent’s <johndeeretoys.com> domain name resolves to a website containing a directory that features hyperlinks to Complainant’s competitors. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007), the panel found a respondent’s similar use of a domain name, to resolve to a list of hyperlinks that lead to websites advertising complainant’s competitors, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) similarly held that the respondent’s display of a hyperlink list that resolved to the complainant’s competitors was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Based on the precedent established by previous UDRP panels, the Panel determines that Respondent’s use of the <johndeeretoys.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <johndeeretoys.com> domain name to resolve to a website that contains a list of third-party hyperlinks, which resolve to Complainant’s competitors in the farm, forestry, and construction equipment industry. Complainant also offers toy versions of this equipment. Internet users interested in Complainant’s actual equipment, or toy versions of said equipment, may instead purchase a competing product from one of Complainant’s competitors due to Respondent’s use of the confusingly similar disputed domain name. This use disrupts Complainant’s business, and indicates bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). 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).”). The Panel therefore concludes that Respondent’s use of the <johndeeretoys.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Respondent commercially benefits from the aforementioned
hyperlinks, presumably receiving click-through fees for each Internet user that
clicks on one of the hyperlinks. Internet users may become confused by Respondent’s
use of the <johndeeretoys.com> domain name as to Complainant’s
sponsorship, affiliation, or endorsement of the disputed domain name and
resolving website. In both Zee TV
USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) and
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <johndeeretoys.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 9, 2010
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