The Toro Company v. Phillip Davis
Claim Number: FA1208001456208
Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne of Crawford Manau PLLC, Minnesota, USA. Respondent is Phillip Davis (“Respondent”), represented by Eric Menhart of Lexero Law, Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <torogroup.com>, registered with ENOM, INC.
The undersigned certifies that he 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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 1, 2012; the National Arbitration Forum received payment on August 1, 2012.
On August 1, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <torogroup.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 August 2, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@torogroup.com. Also on August 2, 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 timely Response was received and determined to be complete on August 21, 2012.
On August 27, 2012, an Additional Submission by the Complainant was received timely. Also, the Respondent filed an Additional Submission in time, i.e. on August 31, 2012.
On August 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i. The disputed domain name incorporates the mark entirely while adding the generic term “group.”
i. The WHOIS information identifies Respondent as “Phillip Davis.”
i. Respondent’s website resolves to a website featuring various third-party links. Such links are housed under headings such as “used garden tractor” and “John Deere Dealers” and direct Internet users to Complainant’s competitors.
B. Respondent
1. Respondent does not dispute that the <torogroup.com> domain name is “facially similar to Complainant’s marks under the Policy.”
2. Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
i. Respondent made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services prior to receiving the Complaint.
ii. Respondent’s company specializes in naming and branding, specifically “initial name development to the matching web site and collateral design . . .”
iii. The word “toro” in Spanish means “bull.” Respondent registered this term combined with the term “group” because it would make a good connection to positive association in the business world. Respondent was not the original registrant of the domain name at issue. Because the terms of the disputed domain name are common and generic, Respondent has a right to own the disputed domain name.
3. The disputed domain name was not registered or used in bad faith under Policy ¶ 4(a)(iii).
i. Respondent never offered to sell, rent, or otherwise transfer the disputed domain name to Complainant.
ii. Respondent has no pattern of preventing the owner of a trademark registration from reflecting its mark in a domain name.
iii. Respondent did not register the disputed domain name for the purpose of disrupting the business of a competitor.
iv. Respondent did not intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark.
v. Respondent registered the domain name at issue for the purposes of assisting businesses with branding. Respondent did not intend for the advertisements to Complainant’s competitors to appear, and the advertisements were only up for a very short time period until Respondent had them removed.
C. Additional Submissions
1. Complainant
In its Additional Submission, Complainant argued that Respondent is not commonly known by a company name containing “Toro”, nor by the domain name <torogroup.com> and that the website to which the disputed domain name resolved made no reference to Respondent’s asserted re-branding business. Complainant further argues that the disputed domain name was parked and that virtually all UDRP panels faced with this type of fact pattern have held that there are no rights or legitimate interests in respect of the disputed domain name when the domain name is parket at a websited that sponsors ‘pay-per-click’ links resoving to third party websites. Complainant further contends that, despite recent changes in the content on the website linked to the disputed domain name, Respondent failed to remove links to competitors of Complainant on the website. In conclusion, Respondent is of the opinion that the primary purpose for Respondent is to have a parked website that would generate click-through fees, that Respondent’s activities have the potential to create actual confusion with Complainant’s TORO trademark and that the disputed domain name was therefore registered and used in bad faith.
2. Respondent
In its Additional Submission, Respondent argues that Respondent’s offer to sell the domain name is in connection to its business. Respondent further contends that there are numerous third parties that have adopted the word “toro” in their business names and that the registration of a domain name containing this generic descriptor would be in line with Respondent’s business. Respondent also argues that the fact that so-called related searches on the website linked to the disputed domain name that show links to competitors are no advertisements and are in line with Respondent’s good faith use of the disputed domain name.
Complainant is a manufacturer of lawn mowers, turf care equipment, lawn tractors, utility vehicles, snow throwers and other types of outdoor power equipment. Complainant has registered rights in its TORO trademark, which it uses since 1914. Complainant uses its TORO trademark in connection with the abovementioned services.
Respondent has registered the disputed domain name.
The website linked to the disputed domain name is a so-called parking page. The website contained links to competitors to Complainant. Following the complaint, Respondent has changed the content of the website, but the website still contains links to competitors to Complainant under the “related searches” displayed on the website.
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.
Complainant asserts that it has rights in the TORO mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 755,846 registered September 3, 1963). The Panel finds that Complainant’s USPTO registration for the TORO mark is sufficient to establish rights under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant also argues that the <torogroup.com> domain name is confusingly similar to the TORO mark under Policy ¶ 4(a)(i). Complainant notes that the disputed domain name contains the entire TORO mark, while adding the generic term “group.” Respondent admits that the <torogroup.com> domain name is “facially similar to Complainant’s marks under the Policy.” The Panel finds that Respondent’s <torogroup.com> domain name is confusingly similar to Complainant’s TORO mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
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.”).
Complainant contends that Respondent has no statutory or common law rights in the TORO mark or the disputed domain name. Further, Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant cites the WHOIS information, which identifies the registrant of the disputed domain name as “Phillip Davis,” to support its conclusion that Respondent has not been known by the domain name. The Panel agrees with Complainant and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further argues that Respondent is not using the disputed domain name for 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). Complainant contends that the <torogroup.com> domain name resolves to a website that displays third-party links to websites offering goods and services for Complainant’s competitors in the lawn care and outdoor equipment industries. Complainant submits a screenshot of the resolving website in its Exhibit 5. According to the Panel, such links are indeed contained under headings such as “John Deere Dealers” or “Small Tractor Implements.” Complainant argues that Respondent is presumably paid for routing Internet users to these third-party websites. The Panel finds that Respondent is not using the <torogroup.com> domain name for 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). 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).
While Respondent contends that the competing hyperlinks were placed upon the resolving website through no fault of Respondent’s, the Panel is of the opinion that Respondent is liable for all such instances under Policy ¶ 4(a)(ii). See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Complainant argues that Respondent’s activities with the disputed domain name have disrupted Complainant’s business and are evidence of bad faith registration and use. As noted above, Complainant has argued that the website resolving from the disputed domain name displays third-party links to Complainant’s competitors. Prior panels have determined that the display of third-party links to a complainant’s competitor is evidence of bad faith under Policy ¶ 4(b)(iii), and so this Panel finds. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Further, Complainant asserts that Respondent registered the disputed domain name in order to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Complainant asserts that Respondent is being paid to host its third-party links to Complainant’s competitors and that, by using the TORO mark to accomplish such a feat, Respondent has created a likelihood of confusion with Complainant’s mark. The Panel finds that Respondent’s hosting of a website containing various third-party commercial links to Complainant’s competitors is evidence of bad faith registration and use under 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.’”).
Respondent asserts that the competing hyperlinks were placed on Respondent’s website by a third party. However, the Panel notes that such a fact does not necessarily alleviate Respondent’s culpability for those links under Policy ¶ 4(a)(iii). See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith). Respondent is indeed responsible for the content displayed through the domain names it has registered. As this content is clearly infringing Complainant’s rights and as it is apparent that Respondent is trying to commercially benefit from these rights without legitimate interest in the disputed domain name, the Panel opines that Respondent registered and used the disputed domain name in bad faith.
Doctrine of Laches
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly choose to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <torogroup.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Flip Petillion, Panelist
Dated: September 10, 2012
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