Clark Equipment Company v. Robert Scott / Bobcat On Demand Ltd.
Claim Number: FA1309001517932
Complainant is Clark Equipment Company (“Complainant”), represented by Erica Jeung Dickey of Michael Best & Friedrich LLP, Wisconsin, USA. Respondents are Robert Scott (“Respondent”), Canada, and Bobcat On Demand Ltd., Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bobcatoftoronto.com> and <bobcatondemand.com>, registered with Tucows, Inc.; DNC Holdings, Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2013; the National Arbitration Forum received payment on September 5, 2013.
On September 5, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <bobcatoftoronto.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 September 5, 2013, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <bobcatondemand.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 September 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@bobcatoftoronto.com, postmaster@bobcatondemand.com. Also on September 9, 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 October 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
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.” In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.
Complainant contends that the WHOIS record indicates that both domain names were registered to registrants with “essentially identical” addresses, and both domain names are hosted at the same IP location, “California – Milpitas – Ntt America Inc.,” and share the same ASN information, “AS21894 HOMESTEAD – Intuit Inc.” See Complainant’s Exhibits B & E. Complainant further argues that Robert Scott, who registered the <bobcatoftoronto.com> domain name, is the manager of Bobcat On Demand, which registered the <bobcatondemand.com> domain name. Additionally, Complainant claims that the domain names’ “About Us” pages both describe nearly identical company history, offer identical equipment rental services under the trade name “On Demand,” and do business in the same geographic region. See Complainant’s Exhibits F & H.
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
A. Complainant
Policy ¶ 4(a)(i)
a. Complainant, Clark Equipment Company does business as Bobcat Company and uses its BOBCAT mark in connection with its marketing, sale, and rental of compact construction equipment and related equipment, parts, merchandise, and services, including rental services. Complainant is the owner of the <bobcat.com> domain name, though which customers can rent BOBCAT brand equipment. See Complainant’s Exhibit K. Complainant also authorizes various dealers around North America to offer rental services of BOBCAT brand construction equipment. See Complainant’s Exhibits L & Q.
b. Complainant owns rights in the BOBCAT mark through registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 670,566 registered December 2, 1958). See Complainant’s Exhibit I. Complainant also owns rights in the BOBCAT mark through registrations with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. 247,412 registered June 27, 1980). See id.
c. The <bobcatoftoronto.com> and <bobcatondemand.com> domain names are confusingly similar to Complainant’s BOBCAT mark, because both domain names incorporate the mark in its entirety and merely add the descriptive phrases “of Toronto” and “on demand.”
Policy ¶ 4(a)(ii)
d. Complainant has not authorized Respondent to use its BOBCAT mark in connection with a domain name or the rental of construction equipment. See Complainant’s Exhibits L & Q. Furthermore, because of the content posted on the websites, the Panel may infer that Respondent is not commonly known as <bobcatoftoronto.com> or <bobcatondemand.com>, even though the WHOIS information identifies the registrant of the <bobcatondemand.com> domain name as “Robert Scott / Bobcat On Demand Ltd.” See Complainant’s Exhibits F & O.
e. Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain names resolve to websites that purport to rent BOBCAT construction equipment without Complainant’s authorization. See Complainant’s Exhibits F, H, N, & O. These rental services directly compete with the rental services offered by Complainant and the authorized dealers of Complainant’s BOBCAT equipment.
Policy ¶ 4(a)(iii)
f. Respondent has demonstrated bad faith registration and use of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names pursuant to Policy ¶ 4(b)(iii), because the domain names target Internet users seeking Complainant’s services and divert them to Respondent’s competing websites. See Complainant’s Exhibits F, H, N, & O.
g. Respondent has demonstrated bad faith registration and use of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names pursuant to Policy ¶ 4(b)(iv), because the domain names create a likelihood of confusion with Complainant’s BOBCAT mark and Respondent is attracting commercial business therefrom.
h. Respondent registered the disputed domain names with actual notice of Complainant’s rights in the BOBCAT mark, which demonstrates Respondent’s bad faith registration and use of the domain names pursuant to Policy ¶ 4(a)(iii). See Complainant’s Exhibits H, N, & O.
Respondent registered the <bobcatondemand.com> domain name on July 13, 2001 and the <bobcatoftoronto.com> domain name on February 14, 2009.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Clark Equipment Company of West Fargo, ND, USA, owns the mark BOBCAT, which it has registered in the USA and Canada. Complainant has used the mark continuously since at least as early as 1958 in connection with the sale, rental and servicing of compact construction equipment.
Respondent is Robert Scott/Bobcat On Demand Ltd of Markham, ON, Canada. Respondent’s registrar’s address is Toronto, ON, Canada for the <bobcatoftoronto.com> domain name which was registered on February 14, 2009. Respondent’s registrar’s address is Metairie, LA, USA for the <bobcatondemand.com> domain name which was registered on July 13, 2001.
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.”).
Complainant asserts that it uses BOBCAT mark in connection with the marketing, sale, and rental of compact construction equipment and related parts, merchandise, and services. Complainant states that it owns rights in the BOBCAT mark through registrations with both the USPTO (e.g., Reg. No. 670,566 registered December 2, 1958) and the CIPO (e.g., Reg. No. 247,412 registered June 27, 1980). See Complainant’s Exhibit I. Previous panels have held that a complainant establishes its rights in a mark under the Policy by registering the mark with various trademark agencies around the world. See, e.g., 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)). The Panel here finds that Complainant has demonstrated its rights in the BOBCAT mark pursuant to Policy ¶ 4(a)(i).
Complainant next argues that <bobcatoftoronto.com> and <bobcatondemand.com> domain names are confusingly similar to Complainant’s BOBCAT mark, because both domain names incorporate the mark in its entirety and merely add the phrases “of Toronto” and “on demand.” The Panel notes that in addition to these phrases, each of the disputed domain names adds the generic top-level domain (“gTLD”) “.com.” Past panels have determined that a domain name’s addition of a gTLD is irrelevant for the purpose of a confusing similarity analysis under Policy ¶ 4(a)(i). See 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). It has previously been determined that a domain name’s addition of a geographic term or phrase does not sufficiently distinguish the domain name from a complainant’s mark. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it 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.”).
In the instant proceedings, the Panel finds that the added phrase “of Toronto” is merely a geographic reference which is presumptively unprotectable, and thus the <bobcatoftoronto.com> domain name is confusingly similar to Complainant’s BOBCAT mark pursuant to Policy ¶ 4(a)(i). The Panel notes that in Churchill Ins. Co. Ltd. v. Sutherland FA 1328073 (Nat. Arb. Forum July 13, 2010), a previous panel held that the <churchilllendinggroup.com> domain name was confusingly similar to the complainant’s CHURCHILL mark, because the domain name fully incorporated the complainant’s mark and added the descriptive phrase “lending group.” The panel in that decision stated that the “alteration of [c]omplainant’s mark with the addition of a phrase comprised of terms descriptive of [c]omplainant’s business fails to create a distinct domain name that avoids confusing similarity.” Id. (citing Chanel, Inc.. v. Cologne Zone FA 932344 (Nat. Arb. Forum Apr. 23, 2007)). The Panel finds that “on demand” is a phrase that is merely descriptive of Complainant’s rental services, since construction equipment rental services are provided on demand. Accordingly, the Panel finds that the <bobcatondemand.com> domain name is confusingly similar to Complainant’s BOBCAT mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii), because Complainant has not authorized Respondent to use its BOBCAT mark in connection with a domain name or the rental of construction equipment. See Complainant’s Exhibits L & Q. Complainant further contends that the content of the websites proves that Respondent is not commonly known as <bobcatoftoronto.com> or <bobcatondemand.com>. See Complainant’s Exhibits F & O.
Complainant submits screenshots that show that Respondent identifies itself as “On Demand” on both of the websites, with statements such as “Welcome to the OnDemand Services Group of Companies!,” See id. The Panel notes that in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel held that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Complainant here asserts that it has not authorized Respondent’s use of its BOBCAT mark and submits evidence to show Respondent is known as “On Demand.” The Panel finds that Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii).
The Panel notes that the WHOIS information identifies the registrant of the <bobcatoftoronto.com> domain name as “Robert Scott,” which indicates that Respondent is known by that name and not as <bobcatoftoronto.com>. The WHOIS information identifies the registrant of the <bobcatondemand.com> domain name as “Robert Scott / Bobcat On Demand Ltd.” The Panel notes that in AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel held that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name, and thus declined to find that the respondent was commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The Panel finds that the WHOIS information offers additional support for the conclusion that the Respondent is not commonly known by either of the disputed domain names pursuant to Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s use of the disputed domain names is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use, because the disputed domain names resolve to websites that purport to rent Complainant’s BOBCAT construction equipment without Complainant’s authorization. See Complainant’s Exhibits F, H, N, & O. Complainant asserts that these rental services directly compete with the rental services offered by Complainant and the authorized dealers of Complainant’s BOBCAT equipment. The Panel notes that in Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003), the panel held that the respondent’s use of the disputed domain names was not protected under Policy ¶¶ 4(c)(i) or 4(c)(iii), because the domain names resolved to a competing website on which respondent sold the complainant’s parts without a license from the complainant. In the instant proceedings, Complainant has submitted evidence that it has not authorized Respondent to deal in its BOBCAT construction equipment. See Complainant’s Exhibits L & Q. The Panel notes that Respondent is advertising the rental of Complainant’s construction equipment without Complainant’s authorization. The Panel finds that Respondent’s use of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names is not protected as 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant first argues that Respondent has demonstrated bad faith registration and use of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names pursuant to Policy ¶ 4(b)(iii), because the domain names target Internet users seeking Complainant’s services and divert them to Respondent’s websites. Complainant further argues that Respondent may be deemed a direct competitor of Complainant, since the disputed websites offer BOBCAT construction equipment for rent without Complainant’s authorization, and thus directly compete with Complainant’s BOBCAT construction equipment rental services. See Complainant’s Exhibits F, H, N, & O. The Panel finds that Respondent has demonstrated bad faith registration and use of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names pursuant to Policy ¶ 4(b)(iii). See 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).”).
Complainant next argues that Respondent has demonstrated bad faith registration and use of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names pursuant to Policy ¶ 4(b)(iv), because the domain names create a likelihood of confusion with Complainant’s BOBCAT mark and Respondent is attracting commercial business therefrom. The Panel notes that in Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003), the panel held that the respondent had demonstrated bad faith registration and use under Policy ¶ 4(b)(iv), stating: “[t]he contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that [the] [r]espondent is either the exclusive distributor or a subsidiary of [the] [c]omplainant, or at the very least that [the] [c]omplainant has approved its use of the domain name.” The Panel here again notes that the disputed domain names resolve to websites that offer Complainant’s BOBCAT products, and that each of the <bobcatoftoronto.com> and <bobcatondemand.com> domain names are confusingly similar to Complainant’s BOBCAT mark. See Complainant’s Exhibits F, H, N, & O. The Panel finds that Respondent has demonstrated bad faith registration and use of the disputed domain names pursuant to Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bobcatoftoronto.com> and <bobcatondemand.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 17, 2013
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