national arbitration forum

 

DECISION

 

Clark Equipment Company v. David Sharpley / Sharpley, David

Claim Number: FA1308001513849

 

PARTIES

Complainant is Clark Equipment Company (“Complainant”), represented by Lori S. Meddings, of Michael Best & Friedrich LLP, Wisconsin, USA.  Respondents are David Sharpley / Sharpley, David (“Respondents”), Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bobcatequipment.com>, <bobcatloaders.com>, <bobcatrentals.com>, and <bobcatrentalstore.com> registered with Register.com, as well as <usedbobcats.com> registered with Network Solutions, LLC.

 

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2013; the National Arbitration Forum received payment on August 8, 2013.

 

On August 9, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <usedbobcats.com> domain name is registered with Network Solutions, LLC and that Respondent David Sharpley is the current registrant of the name. On August 12, 2013, Register.com confirmed by e-mail to the National Arbitration Forum that the <bobcatequipment.com>, <bobcatloaders.com>, <bobcatrentals.com>, and <bobcatrentalstore.com> domain names are registered with Register.com and that Respondent David Sharpley is the current registrant of the names.  Register.com and Network Solutions, LLC have verified that Respondents are bound by the Register.com and Network Solutions, LLC registration agreements 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 August 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 3, 2013 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@bobcatequipment.com, postmaster@bobcatloaders.com, postmaster@bobcatrentals.com, postmaster@bobcatrentalstore.com, and postmaster@usedbobcats.com.  Also on August 14, 2013, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on September 3, 2013.

 

A timely Additional Submission was received from Complainant and determined to be complete on September 9, 2013.

 

On September 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondents to Complainant.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are the same person.  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.” 

 

The Panel concludes that consolidation is appropriate in this case as the evidence establishes that the domain names are registered by the same domain name holder, namely, David Sharpley.  While the contact information for the <usedbobcats.com> domain name lists the contact as Sharpley, David, it is apparent that such person is the same person as David Sharpley.  The Panel notes that the contact information for each of the domain names shares the same email and street address and that each domain name is registered to David Sharpley.  Moreover, the disputed domain names and the issues raised with respect to such names are similar.

 

PARTIES' CONTENTIONS

 

A. Complainant

Complainant, Clark Equipment Company, 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 trademark BOBCAT.  Complainant owns numerous U.S. and Canadian trademark registrations for the BOBCAT mark, as used on compact construction equipment, such as skid steer loaders, front end loaders, backhoes, trenchers and excavators and related equipment parts, merchandise and services, including rental services.  See Complaint, Exhibit I.  Complainant also owns and uses the domain names <bobcat.com>, <bobcatused.com>, and <bobcatstore.com>.  See Complaint, Exhibits J, L, and M.

 

Complainant insists that the disputed domain names, <bobcatequipment.com>, <bobcatloaders.com>, <bobcatrentals.com>, and <bobcatrentalstore.com>, are confusingly similar to its BOBCAT trademark. Complainant notes that each of the disputed domain names incorporates the BOBCAT mark in its entirety and contends that the addition of the descriptive and generic terms “equipment,” “loaders,” “rentals,” “rentalstore,” and “used,” all of which directly relate to Complainant’s goods and services, do not distinguish the disputed domain names from the BOBCAT mark.

 

Complainant argues that Respondents have no rights or legitimate interests in the subject domain names. Complainant points out that, currently, Respondents’ domain names have no content and, thus, there is no bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.

 

Complainant notes that, until recently, most (if not all) of the domain names redirected users to <www.nationalrentals.com>, the website for National Rentals Ltd. National Rentals is or was a company in Ottawa, Canada owned by Respondent David Sharpley which apparently rented Complainant’s BOBCAT equipment, as well as disposal bins and storage containers made by parties other than Complainant. Complainant maintains that such former use does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names, insofar as the National Rentals website promoted the rental of products other than Complainant’s BOBCAT equipment.  

 

Complainant also contends that Respondents are not commonly known by any of the domain names and that Complainant never consented to Respondents’ use of BOBCAT or the domain names.

 

With respect to the issue of “bad faith” registration and use, Complainant asserts that Respondents’ current passive holding of the domain names supports a finding of the requisite bad faith.  Complainant further maintains that Respondents’ registration of multiple domain names incorporating the BOBCAT mark establishes a pattern of bad faith that prevents Complainant from using its BOBCAT mark in corresponding domains.

 

Contending that is “inconceivable” that Respondents did not have actual knowledge of Complainant’s BOBCAT mark at the time of registration of the disputed domain names, Complainant also argues that Respondents registered the domain names primarily for the purpose of disrupting Complainant’s business.

 

Complainant further insists that Respondents’ previous use of the domain names to redirect internet uses to the National Rentals website, which promoted for Respondents’ commercial gain the rental of third-party goods, constitutes bad faith registration and use.

 

Finally, Complainant notes that the disputed domain name <bobcatrentalstore.com> was registered through a privacy service and asserts that “[t]his is yet more evidence of bad faith.”

 

B. Respondents

Respondents note that the disputed domain names are not identical to the BOBCAT mark and that the domain names refer to the act of renting bobcat loaders and equipment, the business of Respondents and one of the primary core target markets of Complainant.

 

Respondents point out that the domain names were registered 14 years ago for the sole purposes of promoting the rental of Complainant’s BOBCAT equipment, “a business the Complainant does not operate in, but supplies to.”  Respondents insist that the “use of the domain names are 100% connected with a bona fide offering of goods and services, namely that of renting equipment purchased from the Complainant.  Under no circumstances was there any other intent, let alone harm [to] the Complainant who was a provider to the Respondent.”

 

Respondents further insist that they have not and will not misleadingly divert consumers, as Complainant is not in the same business as that of Respondents. “Nor was or is the intent of the Respondent to tarnish the brand of the Complainant.”

 

Respondents also claim that passive holding of the domain names is not in bad faith “as Respondent has been in this business for several decades and expects his children to potentially leverage this business in the future.”

 

There is “zero evidence” of bad faith, Respondents insist. “The respondent has owned these domain names for some 14 years and in one case purchased the domain name (usedbobcats.com) for $2000. For 14 years the Respondent has kept the domain names current, reflecting the sole intent to use them for the reason they were originally registered, that of supporting the rental business.  The Respondent has been in the business, off and on, for some 29 years renting Bobcat branded equipment and through this period of time has spent millions of dollars purchasing equipment from the Complainant.  Under no circumstances has there been an intent to dispose of the domain names, or approach the said Complainant for potential disposal.”

 

Focusing on Complainant’s specific allegations regarding the issue of bad faith registration and use, Respondents maintain that they did not register the domain names to prevent Complainant from reflecting the BOBCAT mark in a corresponding domain name, “as the Complainant is not in the business of renting skid steer loaders directly, nor selling used bobcats on the secondary market.”  Respondents assert that the domain names were registered 14 years ago and could “very easily” have been registered by Complainant.

 

Respondents also contend that “[g]iven the core business of the Complainant is the supply of [BOBCAT] equipment to rental industry and contractors, there is zero evidence that these domain names disrupt Complainant’s business….”

 

Finally, Respondents dispute the assertion that they intentionally attempted to attract internet users to their site by creating confusion with the BOBCAT mark. Respondents emphasize that “Respondent and the Complainant have different business models, as Clark Equipment is [a] supplier to the rental industry while the Respondent is in the business of renting said equipment.  If one does a search on the terms `used bobcats’ or `bobcat rentals’ one will see a host of sites that leverage the bobcat name.”

 

C. Additional Submissions

In its Additional Submission, Complainant  asserts, in part, that: (1) there is no need for the Panel to find that the domain names are identical to the BOBCAT mark for there to be confusing similarity; (2) contrary to Respondents’ assertion, Complainant is engaged in the rental of BOBCAT equipment and, thus, the parties are competitors; and (3) there is no basis for contending that a respondent who has used the domain names in bad faith should be entitled to passively hold them so that they can be used in bad faith again in the future.

 

FINDINGS

Based on its review of the evidence, the Panel finds that: (1) each of the disputed domain names is confusingly similar to the BOBCAT trademark; (2) Complainant has rights in the BOBCAT mark; (3) Respondent has no rights or legitimate interests in any of the disputed domain names; and (4) each of the disputed domains was registered and is being used in bad faith.

 

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."

 

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

 

The Panel rules that each of the disputed domain names is confusingly similar to the BOBCAT mark.  As noted by Complainant, each domain name incorporates in full the BOBCAT mark adding only descriptive and generic matter, including terms that relate to Complainant’s business, as well as the top-level “.com” domain.  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).”).  Contrary to Respondents’ seeming assertion that a domain name must be identical to the mark in issue, this element of the Policy clearly may be met by evidence that the domain name is “confusingly similar” to the mark.

 

The Panel further finds that Complainant, through evidence of its registrations covering, and long use of, the BOBCAT mark, has rights in such mark.

 

Rights or Legitimate Interests

 

The Panel concludes that Complainant has sustained its burden of establishing that Respondents have no rights or legitimate interests in any of the disputed domain names.  Focusing first on Respondents’ current passive holding of the domain names, it is clear that such may not constitute use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007); see also Clark Equipment Company v. Texas Skid Steer, FA1441589 (Nat. Arb. Forum May 14, 2012 (Complainant met its burden of establishing that respondent had no rights or legitimate interests where the evidence indicated that respondent made no use of the domains).

 

With respect to Respondents’ previous use of the domain names, which redirected users to the National Rentals site, from which one could rent Complainant’s BOBCAT equipment, among other items, pursuant to the oft-cited and relied upon decision in Oki Data America, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), holding that a reseller can be making a bona fide offering of goods or services only if it meets certain requirements, including that only the trademarked goods be available at such site and that the site accurately and prominently disclose the domain name registrant’s relationship with the trademark holder.  Inasmuch as the evidence indicates that neither of these conditions is satisfied by Respondents, the Panel finds that Respondents’ prior use of the domain names was not in connection with a bona fide offering of goods or services.

 

Moreover, in view of evidence that Respondents’ previous use of the domain names was in connection with a site that offered rental services competitive with those offered by Complainant, such earlier use does not give rise to rights or legitimate interests in the disputed domain names.  See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003); see also H-D Michigan, Inc. v. Henrik Hessbo d/b/a Fuc Et Viva, FA 1082084 (Nat. Arb. Forum Nov. 13, 2007) (where respondent used the <motoharley.com> domain name to advertise motorcycle rental services that compete with Complainant’s business, “we would be inclined to conclude that [r]espondent’s use does not [constitute] either 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).”)

 

Registration and Use in Bad Faith

 

The Panel concludes that each of the disputed domain names was registered and is being used in bad faith. The Panel finds that, under the particular circumstances of this case, including evidence of Respondents’ actual knowledge of Complainant’s BOBCAT mark and prior use thereof in connection with confusingly similar domain names, Respondents’ current passive holding of such domain names supports a finding of bad faith registration and use of each of the domain names.  The fact that Respondent Sharpley expects his children to, perhaps, eventually make use of the domain names does not provide any basis to permit Respondents to continue to passively hold the domain names.  After all, any future use of such domain names would remain confusingly similar to the BOBCAT mark.

 

The evidence also supports Complainant’s contention that Respondents registered the domain name to prevent Complainant from reflecting the mark in corresponding domain names, pursuant to paragraph 4(b)(ii) of the Policy.  In registering five domain names that incorporate Complainant’s BOBCAT mark, Respondents have engaged in the requisite “pattern of [such] conduct.”  The fact that Complainant did not register the disputed domain names is immaterial, given evidence showing that Complainant registered a multitude of domain names incorporating its BOBCAT mark from which it sells and rents BOBCAT equipment.  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).

 

The evidence also indicates that Respondents registered the names for the purpose of disrupting the business of a competitor, namely, Complainant, under paragraph 4(b)(iii) of the Policy.  The evidence supports a determination that the parties competed in the equipment rental business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005). 

 

Finally, the evidence supports a determination that Respondents, through their former use of domain names confusingly similar to Complainant’s BOBCAT mark, intentionally attempted to attract, for commercial gain, Internet users to the involved sites by creating a likelihood of confusion as to the source of such sites, within the meaning of paragraph 4(b)(iv) of the Policy.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

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 <bobcatequipment.com>, <bobcatloaders.com>, <bobcatrentals.com>, <bobcatrentalstore.com>, and <usedbobcats.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panelist

Dated:  September 24, 2013

 

 

 

 

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