Deere & Company v. pro-mower snow equipment
Claim Number: FA1306001505613
Complainant is Deere & Company (“Complainant”), represented by Baldev S. Sarai, Illinois, USA Respondent is pro-mower snow equipment (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johndeere-mowers.com> registered with GoDaddy.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2013; the National Arbitration Forum received payment on June 19, 2013.
On June 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <johndeere-mowers.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2013 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@johndeere-mowers.com. Also on June 20, 2013, 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 July 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 owns the JOHN DEERE mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 30,580 registered September 21, 1897). Complainant was founded in 1837 and is the world’s largest manufacturer of agricultural equipment and a leading supplier of equipment for construction, forestry, and turf care. Complainant uses the JOHN DEERE mark in connection with such manufacturing and agricultural products, which are sold in more than 130 countries, and manufactured in 20 countries worldwide.
The <johndeere-mowers.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark as it is comprised of Complainant’s entire mark and merely adds the descriptive term “mowers,” and a generic top-level domain (“gTLD”).
Respondent is not commonly known as JOHN DEERE. Further, Respondent is not a licensed dealer of Complainant’s products, nor otherwise permitted to use Complainant’s mark. Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain as <johndeere-mowers.com> resolves to a commercial website <pro-mover.com>, which is owned by Respondent and promotes and sells lawn mowers that compete directly with Complainant.
Respondent’s <johndeere-mowers.com> domain resolves to a commercial website <pro-mover.com>, which is owned by Respondent to promote and sell lawn mowers that compete directly with Complainant, and therefore disrupts Complainant’s business. Respondent intentionally registered and is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent had constructive and/or actual knowledge of Complainant’s JOHN DEERE mark at the time Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Deere & Company, was founded in 1837 and is a manufacturer of agricultural equipment and a supplier of equipment for construction, forestry, and turf care. Complainant owns the JOHN DEERE mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 30,580 registered September 21, 1897).
Respondent, pro-mower snow equipment, registered the disputed domain name on February 18, 2011. The disputed domain <johndeere-mowers.com> resolves to a commercial website <pro-mover.com>, which is owned by Respondent and promotes and sells lawn mowers that compete directly with Complainant.
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 Panel finds that Complainant’s USPTO registrations establishes its right in the JOHN DEERE mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues the <johndeere-mowers.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark as it is comprised of Complainant’s entire mark and merely adds the descriptive term “mowers,” and a gTLD. The disputed domain further differs from the JOHN DEERE mark as the domain name deletes the space between the JOHN DEERE mark and includes a hyphen. Previous panels have generally found that a disputed domain is not sufficiently distinguished from a mark by the addition of a descriptive term or a gTLD. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Further, past panels have generally found that the deletion of the space between two-work marks and the insertion of a hyphen, fail to distinguish the disputed domain from the mark at issue. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). The Panel finds that the <johndeere-mowers.com> domain name is confusingly similar to Complainant’s JOHN DEERE mark for purposes of Policy ¶ 4(a)(i).
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).
Complainant claims that Respondent is not commonly known as JOHN DEERE. Further, Complainant contends Respondent is not a licensed dealer of Complainant’s products or otherwise permitted to use Complainant’s mark. The Panel finds that Respondent is not commonly known by the domain name at issue under Policy ¶ 4(a)(i). 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 that it is commonly known by the domain name).
Complainant argues that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain as <johndeere-mowers.com> resolves to a commercial website <pro-mover.com>, which is owned by Respondent and promotes and sells lawn mowers that compete directly with Complainant. Previous panels have held that use of domains that intentionally redirect users away from a complainant for respondent’s commercial gain is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds 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 under Policy ¶ 4(c)(iii) because the confusingly similar domain name resolves to Respondent’s own website, which sells products that directly compete with Complainant.
Complainant argues that Respondent’s use of the domain redirects Internet users seeking Complainant to Respondent, therefore disrupting Complainant’s business. Respondent’s disruption of Complainant’s business by diverting users to a site offering competing products is evidence of bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel also finds that Respondent’s attempt to attract Internet users to its website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of Respondent’s website, for Respondent’s own commercial gain, is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent has constructive and/or actual knowledge of Complainant’s JOHN DEERE mark at the time Respondent registered the disputed domain name. Complainant argues that the widespread use and fame of the JOHN DEERE mark and Complainant’s numerous trademark registrations suggest Respondent had knowledge of Complainant’s rights in the mark. Although constructive notice is generally not sufficient to show bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark; therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <johndeere-mowers.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 29, 2013
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