Clark Equipment Company v. Olofssons i Syd AB / Jens Knutsson
Claim Number: FA1202001427947
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M. Konkel of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Olofssons i Syd AB / Jens Knutsson (“Respondent”), represented by Ulf Odman of Olofssons i Syd AB, Sweden.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobcatsverige.com>, registered with Enom, Inc.
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.
ROBERT T. PFEUFFER, Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2012; the National Arbitration Forum received payment on February 3, 2012.
On February 3, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <bobcatsverige.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2012 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@bobcatsverige.com. Also on February 7, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 deficient Response was received on February 29, 2012.
On March 5, 2012, an additional submission was received from the Complainant and, was fully considered by the Panel, which found it to be very helpful
On March 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed ROBERT T. PFEUFFER as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims rights in its BOBCAT mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 670,566 registered December 2, 1958), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 29,371 registered February 25, 1998). Pursuant to Policy ¶ 4(c)(ii), Complainant contends that Respondent is not commonly known by the <bobcatsverige.com> domain name because Respondent is not Complainant’s official equipment dealer in Sweden. Complainant claims that its official equipment dealer in Sweden is “Bobcat Sverige AB.” Additionally, Complainant alleges that Respondent does not own any trademark registrations for the disputed domain name. Complainant also asserts that it did not consent to Respondent’s use of the <bobcatsverige.com> domain name.
Complainant also contends that Respondent’s <bobcatsverige.com> domain name is confusingly similar to Complainant’s BOBCAT mark because the disputed domain name simply adds the geographic term “sverige,” which is translated as “Sweden,” and the generic top-level domain (“gTLD”) .com.
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
As for Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), Complainant argues that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <bobcatsverige.com> domain name because Respondent uses the domain name to resolve to a website advertising Complainant’s BOBCAT products and the products of Complainant’s competitors.
Additionally, Complainant alleges that Respondent does not own any trademark registrations for the disputed domain name. Complainant also asserts that it did not consent to Respondent’s use of the <bobcatsverige.com> domain name.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
While Complainant does not make any specific allegations under Policy ¶ 4(b)(iii) in its Complaint, Complainant does contend that Respondent registered and uses the <bobcatsverige.com> domain name for the purpose of intentionally diverting Complainant’s potential customers from Complainant to Respondent’s official website, where Complainant’s BOBCAT products and the products of Complainant’s competitors are sold.
Complainant claims that Respondent financially benefits from this misperception by redirecting Internet users to its commercial website.
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the BOBCAT mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements on the resolving website for Complainant’s BOBCAT products and the products of Complainant’s competitors indicate that Respondent had actual knowledge of Complainant and its rights.
Complainant does not make any specific allegations under Policy ¶ 4(b)(iii) in its Complaint, however, Complainant does contend that Respondent registered and uses the <bobcatsverige.com> domain name for the purpose of intentionally diverting Complainant’s potential customers from Complainant to Respondent’s official website, where Complainant’s BOBCAT products and the products of Complainant’s competitors are sold.
Complainant argues that Respondent makes neither a bona fide offering of goods
or services nor a legitimate noncommercial or fair use of the <bobcatsverige.com> domain name because Respondent uses the domain name to resolve to a website advertising Complainant’s BOBCAT products and the products of Complainant’s competitors.
B. Respondent
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Under Policy ¶ 4(c)(i), Respondent claims, while not specifically, that its use of the disputed domain name to resolve to Respondent’s official website, which sells Complainant’s BOBCAT products, is a bona fide offering of goods or services. Respondent argues that it has sold Complainant’s BOBCAT products since 1991. Respondent contends that it registered the <bobcatsverige.com> domain name to reflect its business of selling Complainant’s products. Respondent asserts that it is not selling counterfeit BOBCAT products.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Pursuant to Policy ¶ 4(a)(iii), Respondent contends that it did not register or use the <bobcatsverige.com> domain name in bad faith. Respondent alleges that it sells Complainant’s BOBCAT products and has done so since 1991. Respondent asserts that it sells Complainant’s official products and does not sell counterfeit versions of the products. Respondent claims that it registered the disputed domain name to reflect its business of selling Complainant’s products in Sweden.
Additional Submission by Complainant:
In its additional submission, Complainant urges the Panel not to consider the late Response. It points out: This proceeding commenced on February 7, 2012. See Exhibit 1. Respondent’s deadline to respond to the Complaint was February 27, 2012. Id. Respondent sent a response to the Forum by email on February 29, 2012, after the response deadline. See Exhibit 2. Since Respondent did not request an extension of time to respond due to exceptional circumstances, the circumstances on their face do not appear to be exceptional, and Complainant did not stipulate to an extension of time, the Panel should not consider Respondent’s late comments and should decide this dispute based upon the Complaint alone. See Florists’ Transworld Delivery, Inc. v. Floratique, FA 1369249 (Nat. Arb. Forum Mar.10, 2011).
The Panel, in its discretion, has chosen to consider the late response. Complainant responds to Respondent’s comments as follows: Respondent stated that since it registered disputed domain, <bobcatsverige.com> (the “Domain Name”), the Domain Name has been linked to Respondent’s <bobcatsverige.com> website. This is not true. The Domain Name does not redirect Internet users to <bobcatsverige.com>; rather, it hosts a website with information about Respondent’s business, which sells equipment manufactured by Complainant and Complainant’s competitors. See Complaint Exhibit H. Even if the Domain Name did redirect to <bobcatsverige.com>, that website hosts the same content. As discussed at length in the Complaint, neither Respondent’s actual use, nor its claimed use, of the Domain Name gives Respondent any legitimate interest in or right to it.
Respondent stated that it has sold Complainant’s BOBCAT brand construction equipment since 1991, that it deals “with new Bobcat construction machines, manufactured by Bobcat and delivered from Bobcats own European stock according to present EU regulations,” and that it is “not dealing with any kinds of fake Bobcat machines at all.” Even if Respondent sells genuine BOBCAT brand equipment, its use of the Domain Name is not a bona fide use of Complainant’s mark because Respondent uses it to host a website with information about equipment manufactured by Complainant and Complainant’s competitors. See 3M Company v. Touch Screens Inc. / Scott Tippetts, FA 1411139 (Nat. Arb. Forum Nov. 10, 2011) (the respondent's use of <3mtouch.us> and <3mmicrotouch.us> to sell genuine 3M Microtouch products and competing products is not a bona fide use because the respondent used 3M’s marks in competition with the products of others).
Respondent states that it is “probably the second largest Bobcat dealer in Sweden.” As discussed in the Complaint, this does not give Respondent any legitimate interest in or right to the Domain Name, and furthermore, Respondent is not an authorized dealer of Complainant’s equipment. See Caterpillar, Inc. v. Globe Tex, Inc., D2001-0448 (WIPO June 20, 2001) (finding that a respondent who sold CATERPILLAR brand equipment had no right or interest in <caterpillars4sale.com> because the Respondent was not an authorized CATERPILLAR dealer).
Respondent admits that its use of the Domain Name “has really been useful for [Respondent].” This is because Internet users seeking Complainant’s goods and services stumble upon the Domain Name when looking for Complainant’s website or the website for Complainant’s official equipment dealer in Sweden, Bobcat Sverige AB, and are misleadingly diverted to Respondent’s website. The Domain Name has been useful to Respondent because Respondent is using Complainant’s BOBCAT trademark in an inappropriate manner for commercial gain. This is not a legitimate noncommercial or fair use of the Domain Name. Additionally, in its response, Respondent admitted that Complainant should have full rights to and control of its BOBCAT brand name.
For these and others reasons set out below, the panel finds for the complainant.
FINDINGS
(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.
Preliminary Issue: Deficient Response
The Response was received after the deadline to file a response. Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). The panel has decided to consider the late response.
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 to the domain name; and
(6) the domain name has been registered and is being used in bad faith.
In order to satisfy Policy ¶ 4(a)(i), Complainant claims rights in its BOBCAT mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 670,566 registered December 2, 1958), the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 29,371 registered February 25, 1998), and the Swedish Patent and Registration Office (“SPRO”) (e.g., Reg. No. 240,090 registered September 18, 1992). Based on these trademark registrations, the Panel has concluded that Complainant sufficiently demonstrated its rights in the BOBCAT mark in satisfaction of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the Complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the Complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(i), Complainant also contends that Respondent’s <bobcatsverige.com> domain name is confusingly similar to Complainant’s BOBCAT mark because the disputed domain name simply adds the geographic term “sverige,” which is translated as “Sweden,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a geographic term does not remove a disputed domain name from the realm of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [‘Brasil’] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i)”). Additionally, the Panel finds that it may
disregard the addition of the gTLD “.com” because all domain names require some type of top-level domain. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). If the Panel makes both of these findings, the Panel may hold that Respondent’s <bobcatsverige.com> domain name is confusingly similar to Complainant’s BOBCAT mark under Policy ¶ 4(a
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.”).
Respondent is not Complainant’s official equipment dealer in Sweden. Complainant claims that its official equipment dealer in Sweden is “Bobcat Sverige AB.” Additionally, Complainant alleges that Respondent does not own any trademark registrations for the disputed domain name. Complainant also asserts that it did not consent to Respondent’s use of the <bobcatsverige.com> domain name. The Panel notes that the WHOIS information identifies “Olofssons i Syd AB / Jens Knutsson” as the registrant of the disputed domain name, which the Panel finds is not similar to the <bobcatsverige.com> domain name. The Panel finds Complainant’s allegations to be true, therefore, the Panel finds that Respondent is not commonly known by the <bobcatsverige.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the Respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the Respondent was commonly known by that domain name, including the WHOIS information as well as the Complainant’s assertion that it did not authorize or license the Respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the Respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the Respondent was commonly known by the domain names in dispute).
As for Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), Complainant argues that Respondent makes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <bobcatsverige.com> domain name because Respondent uses the domain name to resolve to a website advertising Complainant’s BOBCAT products and the products of Complainant’s competitors. In the Response, Respondent claims that it sells Complainant’s BOBCAT products and uses the resolving website to provide information about its products. Based on this claim, the Panel may presume that Respondent sells both Complainant’s products and Complainant’s competitors’ products, which are also advertised on the resolving website. The Panel agrees with Complainant and determines that using the disputed domain name to sell Complainant and other companies’ products without authorization is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <bobcatsverige.com> domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the Complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel notes that Policy ¶ 4(b)(iii) allows Complainant to prove Respondent’s bad faith registration and use if Complainant shows that its business is disrupted by Respondent’s registration and use of the disputed domain name in a competitive manner. While Complainant does not make any specific allegations under Policy ¶ 4(b)(iii) in its Complaint, Complainant does contend that Respondent registered and uses the <bobcatsverige.com> domain name for the purpose of intentionally diverting Complainant’s potential customers from Complainant to Respondent’s official website, where Complainant’s BOBCAT products and the products of Complainant’s competitors are sold. The Panel determines that such a use may disrupt Complainant’s business; the Panel therefore finds that Respondent is guilty of Policy ¶ 4(b)(iii) bad faith registration and use. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
In addition, the Panel finds that Policy ¶ 4(b)(iv) permits Complainant to demonstrate Respondent’s bad faith registration and use by proving that Respondent registered and uses the disputed domain name for the purpose of commercially benefiting by creating confusion as to Complainant’s affiliation and sponsorship of the disputed domain name. The Panel notes that Complainant does not make any allegations specifically under Policy ¶ 4(b)(iv). However, Complainant does argue that Respondent’s registration and use of the confusingly similar <bobcatsverige.com> domain name suggests that Respondent and Complainant at least are related in some way. Moreover, Complainant claims that Respondent financially benefits from this misperception by redirecting Internet users to its commercial website. As noted above, Respondent asserts that it sells Complainant’s BOBCAT products, so the Panel may presume that Respondent commercially benefits from such a sale. The Panel finds that Respondent is attempting to commercially benefit from confusion as to Complainant’s affiliation with the disputed domain name, the Panel also holds that Respondent registered and uses the <bobcatsverige.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Whirlpool Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Nat. Arb. Forum May 24, 2002) (holding that the respondent’s use of the <whirlpoolparts.com> domain name to operate a website selling the complainant’s products constituted bad faith registration and use under the Policy, despite the fact that the respondent operated a storefront business for 27 years selling the complainant’s parts and appliances).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the BOBCAT mark when Respondent registered the disputed domain name. Complainant further argues that the advertisements on the resolving website for Complainant’s BOBCAT products and the products of Complainant’s competitors indicate that Respondent had actual knowledge of Complainant and its rights. The Panel may disregard Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <bobcatsverige.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bobcatsverige.com> domain name be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Panelist
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