national arbitration forum

 

DECISION

 

Clark Equipment Company v. Jose Hernandez

Claim Number: FA1112001418076

 

PARTIES

Complainant is Clark Equipment Company (“Complainant”), represented by Laura M. Konkel of Michael Best & Friedrich LLP, Wisconsin, USA.  Respondent is Jose Hernandez (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usedbobcatskidsteer.com>, registered with GoDaddy.com, Inc.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2011; the National Arbitration Forum received payment on December 2, 2011.

 

On December 2, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <usedbobcatskidsteer.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On December 2, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 2011 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@usedbobcatskidsteer.com.  Also on December 2, 2011, 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 January 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <usedbobcatskidsteer.com> domain name is confusingly similar to Complainant’s BOBCAT mark.

 

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

 

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

 

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

 

FINDINGS

 

Complainant, Clark Equipment Company, provides compact equipment for a variety of applications including construction, landscaping, and agriculture. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the BOBCAT mark (e.g. Reg. No. 670,566 registered December 2, 1958).

 

Respondent, Jose Hernandez, registered the disputed domain name on February 2, 2009. The disputed domain name resolves to a “pay-per-click” website featuring links to third-party sites, some of which compete with Complainant’s business. Respondent’s website also features hyperlinks to eBay auctions for Complainant’s products. 

 

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

 

Registration of Complainant’s BOBCAT mark with the USPTO (e.g. Reg. No. 670,566 registered December 2, 1958) establishes its rights in the mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). The Panel holds that Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i).

 

Complainant also argues that the <usedbobcatskidsteer.com> domain name is confusingly similar to its BOBCAT mark within the meaning of Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, while adding terms descriptive of Complainant’s business: “used” and “skid steer.” “Skid steer” refers to one of Complainant’s products--its BOBCAT-branded skid steer loader-- which can be purchased in “used” condition. Additionally, the disputed domain name adds the generic top-level domain (“gTLD”) “.com.” The addition of terms descriptive of Complainant’s business to Complainant’s mark and the affixation of a gTLD like “.com” does not distinguish a disputed domain under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Based on the foregoing, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s BOBCAT mark within the meaning of Policy ¶ 4(a)(i).

 

The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.

 

Rights or Legitimate Interests

 

Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. See 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)). In the immediate case, Complainant has satisfied its burden, while Respondent has not. Because Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 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.”). The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.

 

Complainant argues that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information lists the domain name registrant as “Jose Hernandez” for the disputed domain name. The Panel finds no similarity between “Jose Hernandez” and the <usedbobcatskidsteer.com> domain name. Complainant also states that Respondent has registered the disputed domain name without authorization from Complainant to use Complainant’s mark. Because Respondent has failed to submit a Response in this case there is no evidence in the record to suggest that Respondent is in fact commonly known by the disputed domain name. Taking all of this into account, the Panel concludes that Respondent is not commonly known by the disputed 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent uses the disputed domain name to resolve to a page featuring links to products that directly compete with those provided by Complainant. This use of the disputed domain name can be considered neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name 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)). The Panel holds that Respondent’s use of the disputed domain name 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).

 

The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s provision of links to sites offering products that directly compete with those offered by Complainant evidences Respondent’s bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s use of a confusingly similar domain name substantially increases the likelihood that consumers will mistakenly visit Respondent’s site when they had intended to visit Complainant’s. These misdirected users are then presented with links to products that compete with Complainant’s products. The substitution of information about Complainant’s products for information about Complainant’s competitors’ products indisputably 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). The Panel finds that Respondent has registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).

 

The Panel assumes that Respondent receives click-through revenues each time one of the links on its page is accessed. The Panel also assumes that Respondent’s use of a confusingly similar domain name is a ploy to create confusion as to Complainant’s affiliation with the disputed domain name, driving more traffic to Respondent’s site and in turn generating more click-through revenues. Because Respondent seeks to realize a commercial gain from the confusion it creates, the Panel finds Respondent’s actions constitute bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).   

 

Lastly, Complainant alleges that Respondent’s registration and use of the disputed domain name could not have possibly been without actual or constructive knowledge of Complainant and its rights in the BOBCAT mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.  See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark, supporting a finding of registration and use in bad faith under Policy 4(a)(iii). 

 

The Panel finds that the elements of Policy ¶ 4(a)(iii) have 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 <usedbobcatskidsteer.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  January 17, 2012

 

 

 

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