MTD Products Inc v. Roger Smith / Smith Equipment and Kevin Smith / Smith Equipment
Claim Number: FA1404001552064
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Roger Smith / Smith Equipment and Kevin Smith / Smith Equipment (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The <cubcadetsuperstore.com> domain name is registered with GoDaddy.com, LLC.
The <cubcadetequipment.com> and <cubyanmar.com> domain names are registered with Register.com, Inc.
The <cubmowers.com> domain name is registered with Tucows Domains 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2014; the National Arbitration Forum received payment on April 1, 2014.
On April 4, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cubcadetequipment.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 April 4, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cubcadetequipment.com> and <cubyanmar.com> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 April 4, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <cubmowers.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 April 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2014 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@cubmowers.com, postmaster@cubcadetsuperstore.com, postmaster@cubcadetequipment.com, and postmaster@cubyanmar.com. Also on April 9, 2014, 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 April 30, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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.
A. Complainant
i. Complainant, MTD Products Inc, has been a market leader in the design, manufacture, and sale of outdoor power equipment worldwide. Complainant designs and manufactures lawnmowers, walk-behind lawnmowers, riding lawnmowers and tractors, snow throwers, edgers, chipper/shredders, log splitters, rear and front time tillers, hand-held equipment, and related parts.
ii. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CUB CADET mark (e.g., Reg. No. 1,252,738, registered October 4, 1983).
iii. Respondent’s <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names are confusingly similar to Complainant’s CUB CADET mark.
i. Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent is offering Complainant’s trademarked goods on its <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names.
iv. Respondent ceased being an authorized dealer of Complainant in May 2013. Respondent cannot be allowed to continue to operate under the CUB CADET mark.
i. Respondent’s disputed domain names should be considered as having been registered and being used in bad faith.
ii. Respondent’s pattern of registering four different domain names suggests an attempt to prevent Complainant from using the CUB CADET marks in corresponding domain names.
iii. Respondent registered the disputed domain names to divert Internet users to Respondent’s website, and, in turn, disrupt the business of Complainant.
iv. Respondent is diverting Internet users searching for Complainant to Respondent’s own websites, and likely profiting.
B. Respondent
1. Respondent failed to submit a Response in this proceeding.
2. Respondent registered the disputed domain names on the following dates:
v. <cubmowers.com> domain name on June 17, 2005;
vi. <cubcadetsuperstore.com> domain name on December 3, 2010;
vii. <cubcadetequipment.com> domain name on October 7, 2009; and
viii. <cubyanmar.com> domain name on May 17, 2010.
PRELIMINARY ISSUE—MULTIPLE RESPONDENTS
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. 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.”
Complainant contends that the updated WHOIS information indicates that the <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names were all registered by Respondent “Roger Smith / Smith Equipment and Kevin Smith / Smith Equipment.” Complainant asserts that Kevin Smith of Smith Equipment is simply an alias or agent of Roger Smith of Smith Equipment. Complainant states that this is evident due to the fact that the <cubmowers.com> domain name, which was registered by Roger Smith of Smith Equipment, resolves itself to the home page of the <cubcadetequipment.com> domain name, which was registered by Kevin Smith of Smith Equipment. See Complainant’s Exhibit E. Complainant elaborates on the fact that Mr. Roger Smith was once an authorized dealer of CUB CADET goods. In light of the fact that all of the four disputed domain names were commonly owned by the same organization registrant Smith Equipment and in the absence of the Response, the Panel is of the view that Kevin Smith of Smith Equipment is simply an alias or agent of Roger Smith of Smith Equipment.
The Panel finds that Complainant has sufficiently demonstrated that the listed entities are jointly controlled by the same entity, and thus chooses to proceed with the instant proceedings.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 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 contends that it has been a market leader in the design, manufacture, and sale of outdoor power equipment worldwide. Complainant claims that it designs and manufactures lawnmowers, walk-behind lawnmowers, riding lawnmowers and tractors, snow throwers, edgers, chipper/shredders, log splitters, rear and front time tillers, hand-held equipment, and related parts. Complainant asserts that it owns trademark registrations with the USPTO for the CUB CADET mark (e.g., Reg. No. 1,252,738, registered October 4, 1983). See Complainant’s Exhibit A. The Panel observes that Respondent lives within the United States. Therefore, the Panel finds that Complainant’s USPTO registration of the CUB CADET mark sufficiently provides rights in the mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant asserts that Respondent’s <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names are confusingly similar to Complainant’s CUB CADET mark. The Panel observes that Respondent removes the second portion “CADET” in its <cubmowers.com> and <cubyanmar.com> domain names. The Panel finds that Respondent’s deletion of words in a mark is inconsequential to a Policy ¶ 4(a)(i) determination, as the Panel believes that these domain names can remain confusingly similar with only the phrase “CUB.” See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”). The Panel notes that Respondent adds the generic or descriptive terms “mowers,” “superstore,” “equipment,” or “yanmar” to its disputed domain names. The Panel holds that Respondent’s addition of a generic or descriptive term to Complainant’s CUB CADET mark does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Lastly, the Panel observes that Respondent removes the space in the CUB CADET mark in its <cubcadetsuperstore.com> and <cubcadetequipment.com> domain names and adds the generic top-level domain (“gTLD”) “.com” to each of the domain names. The Panel holds that Respondent’s removal of spaces and addition of a gTLD does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). 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, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names are confusingly similar to Complainant’s CUB CADET mark under 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); 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 alleges that Respondent is not commonly known by the <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names. Complainant asserts that the WHOIS information for the disputed domain names lists Respondent as “Roger Smith / Smith Equipment and Kevin Smith / Smith Equipment.” See Complainant’s Exhibit D. Complainant further argues that it has no corporate affiliations with Respondent following the May 2013 dissolution of the parties arrangement. The Panel notes that Respondent fails to provide any evidence that it is known by the disputed domain names. Thus, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent is offering Complainant’s trademarked goods on its <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names. Complainant claims that Respondent’s disputed domain names resolve to websites purporting to offer CUB CADET goods as well as goods from Complainant’s competitors. See Complainant’s Exhibit E. Therefore, the Panel determines that Respondent’s use of the <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names to provide Complainant’s goods or goods competing with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Complainant further notes that Respondent is continuing to use these domain names despite the fact that its distribution agreement with Respondent has dissolved. In UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001) the panel refused to grant the respondent any Policy ¶ 4(a)(ii) rights when the pre-existing distribution agreement between the parties had been ended and the respondent had no independent basis for retaining the domain name. The Panel here similarly agrees that Respondent lacks any Policy ¶ 4(a)(ii) basis for retaining these disputed domain names.
Complainant argues that Respondent’s pattern of registering four different domain names suggests an attempt to prevent Complainant from using the CUB CADET marks in corresponding domain names. In Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004), the panel found bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where respondent registered the <toshibastrata.com> domain name to prevent complainant from reflecting the TOSHIBA and STRATA marks in a corresponding domain name. Thus, the Panel finds that Respondent’s registration of the <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names shows bad faith use and registration under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent registered the <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names to divert Internet users to Respondent’s website, and, in turn, disrupt the business of Complainant. The Panel observes that Respondent’s disputed domain names resolve to web pages offering Complainant’s products or products of Complainant’s competitors. See Complainant’s Exhibit F. Complainant argues that Respondent is appropriating Complainant’s CUB CADET mark in its disputed domain name to divert Complainant’s customers to Respondent’s competing business. Past UDRP panels have held that a respondent’s use of a domain name to offer a complainant’s products or competing products disrupts that complainant’s business. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Accordingly, the Panel holds that Respondent is disrupting Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is diverting Internet users searching for Complainant to Respondent’s own websites, and likely profiting. Complainant claims that Respondent’s <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names resolve to websites purporting to offer CUB CADET goods as well as goods from competitors of Complainant. See Complainant’s Exhibit E. As the Panel finds that Respondent is using the disputed domain names to offer products of Complainant or its competitors and is commercially benefitting, the Panel holds that Respondent has registered and is using the <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the 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 <cubmowers.com>, <cubcadetsuperstore.com>, <cubcadetequipment.com>, and <cubyanmar.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: May 10, 2014
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