Clark Equipment Company v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1207001451753
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M. Konkel of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent & the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobcatofmandan.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 3, 2012; the National Arbitration Forum received payment on July 3, 2012.
On July 4, 2012, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <bobcatofmandan.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICDOMAINREGISTRY.COM 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 July 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@bobcatofmandan.com. Also on July 6, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant Bobcat Company is a leading global provider of compact equipment for a variety of applications including construction, landscaping and agriculture. In 1958, Bobcat Company introduced the first compact loader into the market under its BOBCAT trademark. For more than 50 years, Bobcat Company has manufactured and sold BOBCAT brand loaders, excavators and backhoes. Bobcat Company also provides parts and services for its BOBCAT brand goods under the BOBCAT mark, and sells BOBCAT brand accessories such as clothing.
Complainant registered the BOBCAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 670,566 registered December 2, 1958).
Complainant authorizes websites at <bobcat.com> and <bobcatofmandan.net>
Respondent’s <bobcatofmandan.com> domain name is confusingly similar to Complainant’s BOBCAT mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent resolves the disputed domain name to a website offering links to Complainant competitors.
Respondent also registered and is using the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Bobcat Company’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the BOB CAT mark through registration of the mark with the USPTO and otherwise.
Complainant authorizes websites at <bobcat.com> and <bobcatofmandan.net>.
Respondent registered the at‑issue domain name subsequent to Complainant acquiring rights in the BOB CAT mark.
Respondent is not associated with Complainant nor authorized to use Complainant’s trademark.
The at‑issue domain name addresses a website that contains pay‑per‑click links to Complainant’s competitors.
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:
(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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registrations for BOB CAT conclusively demonstrates that Complainant holds rights in a mark for the purposes 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 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).”).
The at‑issue domain name includes Complainant’s entire trademark, only adding the preposition “of,” the geographic term “Mandan,” and the generic top-level domain name, “.com.” These alterations do not distinguish the at-issue domain name from Complainant’s trademark for the purposes of Policy ¶4(a)(i). See Clark Equip. Co. v. Equip. Distribs., Inc., FA 1315702 (Nat. Arb. Forum Apr. 28, 2010) (finding the <bobcatofmaryland.com> domain name to be confusingly similar to the BOBCAT mark despite the addition of the preposition “of” and the geographic term “maryland”); 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).
Respondent lacks rights and legitimate interests in respect of the <bobcatofmandan.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at‑issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent is not connected with or authorized by Complainant to use the BOB CAT mark in any way. Moreover, there is no evidence in the record, which includes WHOIS information, tending to prove that Respondent is commonly known by the disputed domain name. The fact that Respondent is thus not commonly known by the disputed domain name shows that Respondent lacks rights and interests in respect of the domain name pursuant to Policy ¶ 4(a)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”);
The at‑issue domain name resolves to a website offering links to Complainant’s competitors. It is reasonable to assume that Respondent collects click-through fees for each Internet user diverted to the websites linked to Respondent’s website. Therefore, the Panel concludes that Respondent is not making 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 under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain name in bad faith.
Though the confusingly similar at‑issue domain name Respondent means to suggest a non-existent connection or relationship between itself and Complainant and, as noted above, the domain name references a website displaying pay per click links to Complainant’s competitors. These circumstances indicate that Respondent registered and is using the at‑issue domain name to intentionally attract, for commercial gain, Internet users to its website by capitalizing on the confusion between the at‑issue domain name and Complainant’s BOB CAT trademark. Therefore the Panel concludes that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, the renown of Complainant’s BOB CAT trademark, the fact that Complainant authorizes a website at <bobcatofmandan.net>, and the content of Respondent’s <bobcatofmandan.com> website which directs visitors to Complainant’s competition together show that Respondent must have been aware of Complainant’s BOB CAT mark when it registered the <bobcatofmandan.com> domain name. Respondent’s pre-registration knowledge of Complainant’s trademark additionally demonstrates that Respondent registered and uses the domain name in bad faith. See 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)"; see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith…)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bobcatofmandan.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 2, 2012
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