The Toro Company v. ICS INC.
Claim Number: FA1312001535973
Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne of Crawford Maunu PLLC, Minnesota, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toromower.com>, registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on December 23, 2013; the National Arbitration Forum received payment on December 23, 2013.
On December 26, 2013, Tucows, Inc. confirmed by e-mail to the National Arbi-tration Forum that the <toromower.com> domain name is registered with Tu-cows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agree-ment 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 December 31, 2013, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of January 21, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@toromower.com. Also on December 31, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 January 22, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 is a leading manufacturer of lawn mowers, turf care equipment, lawn tractors, utility vehicles, snow throwers and other outdoor power equipment.
Complainant has rights in the TORO service mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (including Registry No. 2,336,569, registered March 28, 2000).
Complainant operates official websites through the domain names <toro.com> and <thetorocompany.com>.
Respondent registered the <toromower.com> domain name on or about Feb-ruary 5, 2004.
The domain name is confusingly similar to Complainant’s TORO mark.
Respondent has not been commonly known by the <toromower.com> domain name, and Complainant has not authorized Respondent to use its TORO mark in any way.
The domain name resolves to a website containing links including, “Toro Riding Mower” and “Toro Lawn Mowers,” but, instead of resolving to Complainant’s website, these links resolve to third-party websites featuring lawn and garden equipment marketed by Complainant’s business competitors.
Respondent collects pay-per-click fees through the links present on its website.
Respondent has no rights to or legitimate interests in the <toromower.com> domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent uses the domain name, for commercial gain, to attract Internet users to its competing website by creating a likelihood of confusion as to the possibility of Complainant’s association with the domain name and resolving website.
Respondent both registered and uses the <toromower.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will decide this administrative proceeding on the basis of Complainant's undisputed representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept as true all reasonable allegations and inferences set forth in the Complaint unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the TORO service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding that a trademark registration with the USPTO was adequate to establish rights in the mark pursuant to Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the Cayman Islands). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether a UDRP complain-ant has registered its trademark in the country in which a respondent resides, only that it can establish rights in its mark in some jurisdiction). To the same effect, see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <toromower.com> domain name is con-fusingly similar to Complainant’s TORO service mark. The domain name con-tains the entire mark, with addition of the generic term “Mower,” which relates to an aspect of Complainant’s business, plus the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (finding that the addition of the generic top-level domain (“gTLD”) “.com” to the mark of another in creating a domain name was irrelevant to a Policy ¶ 4(a)(i) analysis).
See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000), finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name …, namely the trademark SONY,” so that Policy ¶ 4(a)(i) was satisfied).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <toromower.com> do-main name, and that Complainant has not authorized Respondent to use its TORO mark in any way. Moreover, the WHOIS information for the domain name identifies the registrant only as “ICS INC.,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legiti-mate interests in it within the meaning of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by disputed domain names, and so failed to demon-strate that it had rights to or legitimate interests in them as provided in Policy ¶ 4(c)(ii), where the relevant WHOIS information listed the registrant by a name other than the domain name, and where there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute).
We next observe that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services or a leg-itimate noncommercial or fair use of the <toromower.com> domain name in that the domain name resolves to a website containing links including “Toro Riding Mower” and “Toro Lawn Mowers,” but that, instead of resolving to Complainant’s website, these links resolve to third-party websites marketing lawn and garden equipment in competition with the business of Complainant, and that Respondent attempts to profit from the operation of those links. This is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate int-erests in the <bravoclub.com> domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where that respondent used a contested domain name to operate a web-site hosting links to various commercial websites competing with the business of a UDRP complainant).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the con-tested <toromower.com> domain name, as alleged in the Complaint, disrupts Complainant’s business by luring Internet users away from Complainant’s legit-imate websites. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s employment, for its commercial gain, of the <toromower.com> domain name, which is confusingly similar to Complainant’s TORO mark, creates a likelihood of confusion among internet users as to the possibility of Complainant’s association with the domain name and resolving website. This demonstrates bad faith in the registration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, TM Acquisi-tion Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003), finding, under Policy ¶ 4(b)(iv), that:
[M]any Internet users are likely to use search engines to find Com-plainant’s website, only to be misled to Respondent’s website at the … domain name, which features links for competing … websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Re-spondent’s website.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <toromower.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 29, 2014
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