The Toro Company v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1504001615881
Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne of Crawford Maunu PLLC, Minnesota, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtoro.com> ('the Domain Name'), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she 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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2015; the Forum received payment on April 22, 2015.
On April 23, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <wwwtoro.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2015 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@wwwtoro.com. Also on April 24, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On 26 May, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
The Complainant's submissions can be summarised as follows:
The Complainant is the owner of US trade mark registrations for TORO for lawn mowers and outdoor power equipment and has been using the TORO mark since 1914. It operates a website at www.toro.com.
Respondent registered the Domain Name in 2003 and includes the 'www' prefix to the Uniform Resource Locator (url) address in the url address itself. The Domain Name is confusingly similar to the Complainant’s TORO mark as it fully incorporates the TORO Mark modified only by the prefix ‘www’ which is an obvious attempt to typosquat the Complainant's trade mark where an Internet user fails to insert a period between www and the rest of the Complainant's url. The addition of ‘www’ is insufficient to distinguish a domain name from a well-known mark.
The Domain Name contains links to various third party sites featuring lawn and garden equipment and supplies. The links include words such as 'Toro', 'Toro Lawn Mower Repair parts' 'Toro lawn Equipment etc.
The Respondent owns no statutory or common law trade mark rights or any other right or legitimate interest to the mark TORO or the Domain Name.
Respondent is not known by any name that includes TORO nor is the Respondent an authorised dealer or distributor of the Complainant. In addition, Respondent does not sell products or replacement parts for the Complainant’s products.
Profiting from click through fees by diverting consumers to competing web sites is not bona fide use in relation to goods and services, legitimate non-commercial or fair use.
Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent's web site by using the Domain Name. The Respondent's activities create a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation or endorsement of Respondent’s web site. Such conduct disrupts the Complainant’s business.
Registering a domain name with a typographical error, omitting a period and using the ‘www’ in imitation of the Complainant's url shows that the Respondent was aware of the Complainant and its mark.
The Respondent has registered and is using the Domain Name for the purposes of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of US trade mark registrations for TORO for lawn mowers and outdoor power equipment and has been using the TORO mark since 1914. It operates a website at www.toro.com.
The Domain Name contains links to various third party sites featuring lawn and garden equipment and supplies. The links include words such as 'Toro', 'Toro Lawn Mower Repair parts' 'Toro lawn Equipment etc.
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.”).
The Domain Name consists of the Complainant's TORO mark, the generic term 'www' indicating world wide web and the gTLD .com.
Including the generic term ‘www’ indicating world wide web in a domain name does not avoid confusing similarity. See Bank of Am. Corp. v InterMos, FA 95092 (Nat. Arb. Forum Aug 1, 2000)(finding that the respondent's domain name wwwbankofamerica.com is confusingly similar to the Complainant’s trade mark bankofamerica because it takes advantage of a typing error eliminating the period between the www and the domain name that users commonly make when searching on the Internet)
The gTLD .com does not serve to distinguish the Domain Name from the TORO mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Complainant maintains that the Respondent is not commonly known by the Domain Name, is not using it to offer bona fide goods and services and is not making a legitimate non-commercial or fair use of the name. The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights to make a profit by pointing to third party links competing with the complainant's services. See ALPITOUR SpA v Albloushi FA 888651 (Nat. Arb Forum. Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was using the domain name corresponding to the Complainant’s mark to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.)
Additionally the Domain Name appears to be a typo squatted version of the Complainant's domain name chosen in the hope that a customer might mistakenly reach Respondent's web site by typing 'wwwtoro.com' rather than 'www.toro.com' See Amazon.com, Inc v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005) (respondent lacks rights and legitimate interests in the www-amazon.com domain name because the addition of 'www-' constitutes typo squatting)
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Complainant also alleges that the Respondent's use of the site is commercial and he is using it to make profit from linking to third party web sites that compete with the Complainant in a confusing manner. The use is confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant offering gardening equipment under a Domain Name which is a typosquatted version of the Complainant’s Domain Name. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Nat. Arb Forum May 29, 2007) finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
Finally, typosquatting itself is evidence of relevant bad faith registration and use. See Vanguard Group Inc. v IQ Mgmt. Corp FA 328127 (Nat Arb Forum Oct 28, 2004)(By engaging in typosquatting respondent has registered and used the vangard.com domain name in bad faith pursuant to Policy 4(a) (iii)
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtoro.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 27, 2015
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