Clark Equipment Company v. Texas Skid Steer / Western Cowboy Art / Bobby Miles
Claim Number: FA 1355961
Complainant is Clark Equipment Company (“Complainant”), represented by Lori S. Meddings of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Texas Skid Steer / Western Cowboy Art / Bobby Miles (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usedbobcatforsale.com> and <usedbobcatsforsale.com>, registered with NETWORK SOLUTIONS, LLC.
The domain name at issue is <bobcatsforsale.net>, registered with FASTDOMAIN, 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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2010; the National Arbitration Forum received payment on November 2, 2010.
On November 2, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <usedbobcatforsale.com> and <usedbobcatsforsale.com> domain names are registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the names. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 November 2, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <bobcatsforsale.net> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, INC. 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 November 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 24, 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@usedbobcatforsale.com, postmaster@usedbobcatsforsale.com, and postmaster@bobcatsforsale.net. Also on November 4, 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 November 24, 2010.
On November 29, 2010 an Additional Submission was received from Complainant and on December 6, 2010 an Additional Submission was received from respondent.
On December 2, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant asserts that its counsel sent a single demand letter to Bobby Miles at Texas Skid Steer and to Western Cowboy Art that referenced all three disputed domain names. Complainant indicates that its counsel received an email response from milesmarketing@aol.com to the letter that stated, “I purchased the domain names in question.” Complainant further asserts that in response to the UDRP Complaint referencing all three domain names, milesmarketing@aol.com again acknowledged ownership of all three domain names. The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings on that basis.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading global provider of compact equipment for a variety of applications
including construction, landscaping and agriculture. In 1958, Complainant introduced the first
compact loader into the market under the BOBCAT trademark. For more than 50 years,
Complainant has manufactured and sold BOBCAT brand loaders, excavators and backhoes, and
Complainant owns the trademark rights and registrations for the BOBCAT Marks.
Complainant also provides parts and services for its BOBCAT brand goods under the
BOBCAT Marks, and sells BOBCAT brand gear such as clothing. Complainant owns and uses the <bobcat.com> domain name for a website providing information about BOBCAT equipment, the Bobcat Company and how to locate a BOBCAT dealer or request a demonstration of BOBCAT equipment.
Complainant’s BOBCAT brand equipment and the BOBCAT Marks are extremely well known,
if not famous, in the United States and worldwide for compact construction equipment.
Complainant has received multiple awards and recognition for its BOBCAT equipment. For
example, in 2004 the American Society of Agricultural Engineers honored Complainant with the
“Historic Landmark” award for inventing the BOBCAT skid steer loader.
Respondent owns <usedbobcatsforsale.com>, <usedbobcatforsale.com> and
<bobcatsforsale.net> and uses the Domain Names for websites titled “Bobcats for Sale,” and
“Used Bobcats for Sale. The websites associated with <bobcatsforsale.net> and <usedbobcatforsale.com> falsely state that “we now represent Bobcat Company.” The website associated with <usedbobcatsforsale.com> falsely states that Respondent is “now marketing used Bobcats for sale for Bobcat.”
The Domain Names are confusingly similar to Complainant’s BOBCAT trademark because the
Respondent has merely added the generic terms “used” and “for sale” to the BOBCAT Mark and
to the plural of the BOBCAT Mark. Similarly, the addition of the generic term “used” to another’s trademark does not distinguish Respondent’s Domain Names because the combination of “used” and BOBCAT “could easily confuse Internet users looking to buy pre-owned” BOBCAT equipment from Complainant’s authorized dealers.
Respondent admits that the BOBCAT mark “does not belong to me” and several of Respondent’s
websites falsely state that Respondent “now represent[s] Bobcat Company.” The references to Complainant on Respondent’s website, as well as the response from Respondent, confirm that Respondent had actual knowledge of Complainant and its BOBCAT Marks and registered the Domain Names in bad faith. Respondent’s Domain Names incorporate the BOBCAT Marks in their entirety. This also constitutes further evidence of bad faith.
Respondent has registered and used the Domain Names to intentionally attempt to
attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
Respondent’s business.
B. Respondent
In 2004, Respondent, who had worked in the construction industry throughout much of his
professional career, invested in land for a dealership and began selling used construction equipment on a four acre commercial parcel of property in Springville, Texas. The Respondent began retailing used mini-excavators, skid steers, and bull dozers.
Respondent has grown to specialize primarily in used Bobcats, and makes his living repairing and reselling these used models of Bobcat brand equipment products. The majority of the machines sold by the Respondent are Bobcat-model machines.
For four years, the Respondent has maintained a close personal friendship with Toby Decker, one of the sales managers at Bobcat of Fort Worth, an authorized Bobcat Dealer in Texas, where the Respondent and his customers frequently purchase parts for used Bobcats from Bobcat of Fort Worth. In early 2008, Toby Decker contacted the Respondent Bobby Miles, and asked the Respondent if he would be willing to sell four older Bobcat machines on the Respondent’s lot which Bobcat of Forth Worth had taken on trade in. The Respondent agreed, and put the four Bobcats for sale on his lot.
Respondent markets his actual used Bobcat equipment on his website. The Respondent has
never sold forged Bobcats, or new Bobcats, and the Disputed Domains are merely descriptive of the used machines which the Respondent lawfully retails at his dealership in accordance with the law. The Respondent’s website contains no links to third-party competitors of the Complainant, or cost-per-click (CPC) links of any kind. Respondent has registered the Disputed Domains in good-faith for a legitimate commercial purpose.
Respondent did not register the Disputed Domains for the purpose of capitalizing on the
Complainant’s good will, nor does the Respondent have “a pattern of engaging” in preventing “the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” nor could the Respondent have intended to create a likelihood of confusion or disrupt Complainant’s business.
Contrary to the assertion of the Complainant, panels have held that the use of the term “used”
before a registered trademark obviates confusing similarity, and panels have particularly held that confusing similarity is obviated when the term “used” is (1) used in connection with other descriptive textual elements; and (2) made use of by respondents with dealerships dedicated to retailing used machinery best described by the brand name of the manufacturer.
C. In its Additional Submission
Complainant also alleges that Respondent does not deny that the Domain Names incorporate Complainant’s BOBCAT trademark. Indeed, Respondent admits that Respondent is well aware of the BOBCAT trademark because Respondent repairs and sells “used models of Bobcat brand equipment products.” NAF and WIPO panels have repeatedly found that combining the term “used” with a trademark creates a domain name confusingly similar to a trademark
Respondent is not an authorized dealer of Complainant’s BOBCAT goods and
Complainant has never authorized Respondent to use the BOBCAT trademark in a domain name
or as part of the Respondent’s business name. Respondent’s attempt to claim a connection with
the Complainant greatly stretches the truth.
Respondent’s statement that its websites “contain no links to third-party competitors of
the Complainant” completely ignores the fact that Respondent competes with Complainant and
Complainant’s authorized dealers of used BOBCAT equipment.
Respondent does not deny that it registered the Domain Names with knowledge of
Complainant’s federally registered BOBCAT trademark. Respondent’s use of the Domain
Names to advertise its Texas Skid Steer business is clearly a commercial use.
Respondent’s knowledge of Complainant and its BOBCAT trademark and Respondent’s
commercial use of the Domain Names to promote its own business are exactly the type of facts
that panels rely on to support findings of bad-faith registration and use.
D. In its Additional Submission
Respondent alleges that the Complainant does not dispute that an employee of its dealership contracted with the Respondent for the sale of Complainant's products. Rather, the Complainant downplays the significance of this employee's position within the dealership, citing Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005).
Respondent registered the Disputed Domains after contracting with a sales manager of the Complainant. It cannot be said that the Respondent is using the Disputed Domains in bad faith in light of the undisputed fact that the Respondent has been in privy of contract with the Complainant for the sale of Complainant's products.
(1) the domain name registered by Respondent is 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.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant has submitted evidence of its registration of the BOBCAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 890,034 issued April 28, 1970). The Panel finds that Complainant has rights in its BOBCAT mark by virtue of its registration of the mark with a federal trademark authority such as the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) see also 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.”).
Panel accordingly finds that Respondent’s <usedbobcatforsale.com>, <usedbobcatsforsale.com>, and <bobcatsforsale.net> domain names are confusingly similar to Complainant’s BOBCAT mark under Policy ¶ 4(a)(i).
Complainant alleges that there is no evidence that Respondent is known by the disputed domain names, that Respondent does not own any trademark registrations for the domain names or any portion thereof, and that Complainant has not consented to Respondent’s use of the disputed domain names.
The Panel finds that Complainant’s assertions, along with the WHOIS information, indicate that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).
The Panel finds that Respondent’s use of confusingly similar domain names incorporating Complainant’s BOBCAT mark to advertise and sell construction equipment in competition with Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting).
The Panel finds that Respondent’s use of confusingly similar disputed domain names to promote its own business that sells competing equipment is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006).
The Panel finds that Respondent had actual knowledge of Complainant's mark and registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usedbobcatforsale.com>, <usedbobcatsforsale.com>, <bobcatsforsale.net> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: December 9, 2010
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