Clark Equipment Company v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1602001661425
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M Konkel of Michael Best & Friedrich LLP, United States of America. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobcatmanual.com> ('the Domain Name'), registered with Internet Domain Service BS Corp.
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 February 17, 2016; the Forum received payment on February 17, 2016.
On February 19, 2016, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <bobcatmanual.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 February 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2016 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@bobcatmanual.com. Also on February 19, 2016, 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 March 7, 2016, 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
Complainant's submissions can be summarised as follows:
Complainant is the owner of US trade marks for BOBCAT, ONE TOUGH ANIMAL and a wildcat logo '(the Bobcat Logo') for off road machinery and, inter alia, manuals associated therewith and in 1958 introduced its first compact loader onto the market under its BOBCAT logo. It has a web site at www.bobcat.com.
The Domain Name was created in 2013. Respondent uses the Domain Name to sell unauthorised copies of Complainant's copyright-protected manuals. It prominently displays the Complainant's BOBCAT, ONE TOUGH ANIMAL and the Bobcat Logo and mimics the black, orange and white colour scheme and layout of the Complainant's website. All text on the web site attached to the Domain Name was copied directly from the Complainant's web site. The website attached to the Domain Name also includes advertising for third party equipment that competes with the Complainant’s goods.
The addition of the generic term 'manual' and the gTLD .com to the Complainant's trade mark do not distinguish the Domain Name from it.
A Respondent attempts to pass itself off as Complainant by prominently displaying Complainant's trade marks, copying company information from Complainant’s web site and mimicking the look of it and selling unauthorised copies of Complainant's manuals. It also hosts advertisements for third party businesses that compete with the Complainant. None of these uses are a bona fide offering of goods and services or a legitimate non-commercial or fair use of the Domain Name.
Respondent is not commonly known by the Domain Name. The Complainant did not consent to Respondent's use of the Complainant's BOBCAT mark.
The Respondent's unauthorised use and sale of the Complainant's copyright protected manuals is evidence of bad faith use which creates a likelihood of confusion with the complainant and Respondent commercially benefits from such conduct.
Copying of the Complainant’s web site shows actual knowledge and is further evidence of bad faith
Further, use of a privacy service and failure to answer the Complainant’s cease and desist letter is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of US trade marks for BOBCAT, ONE TOUGH ANIMAL and a wildcat logo (‘the Bobcat Logo') for off road machinery and, inter alia, manuals associated therewith. First use of Bobcat is recorded as 1958. First use of the Bobcat Logo is recorded as 1977. It has a web site at www.bobcat.com.
The Domain Name was created in 2013. Respondent uses the Domain Name to sell unauthorised copies of Complainant's copyright-protected manuals. It prominently displays the Complainant's BOBCAT, ONE TOUGH ANIMAL and the Bobcat Logo. Text on the web site attached to the Domain Name was copied directly from the Complainant's web site. The website attached to the Domain Name also includes advertising for third party equipment that competes with the Complainant’s goods.
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(f), 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.”).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainant’s BOBCAT registered trade mark and the generic term 'manual' which does not serve to distinguish the Domain Name from the Complainant’s BOBCAT mark. See Am. Online, Inc. v Oxford Univ., FA 114654 (Nat. Arb. Forum Aug 21, 2002)('Neither the addition of an ordinary descriptive word nor a geographic qualifier transform Respondent's domain name into separate and distinct marks for the purpose of a Policy 4(a)(i) analysis. ; see also Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat.Arb.Forum Apr 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.") The Panelist finds that the Domain Name is confusingly similar to the Complainant’s registered trade mark BOBCAT for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy.
The Panelist has had an opportunity to review the Respondent's web site. It was not clear to the panellist upon a quick review of the site that it was not a site authorised by the Complainant. As such the web site must be considered to be misleading and the Respondent passing itself off as connected with or authorised by the Complainant by its use of the Domain Name. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.) Previous panels have also found that use by a respondent of a confusingly similar domain name to a well-known mark of the Complainant to attract Internet users to a competing web site does not constitute a bona fide offering of goods and services nor a legitimate or non-commercial fair use. See Alcon. Inc. v ARanked, FA 1306493 (Nat. Arb. Forum, Mar. 18, 2010). As such the panelist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web site is confusing and misleading customers into believing it is associated with the Complainant the panelist believes that the Respondent is attempting to pass itself off as authorised by the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using the Complainant's marks and logo as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy and also causing disruption to the Complainant under Para 4 (iii) of the Policy. See 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). 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 domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv); see also MathForum.com, LLC v Weiguang Huang, D2000-0743 (WIPO Aug.17, 2000) (finding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the Complainant's mark and the domain name was used to host a commercial web site that offered similar services offered by the Complainant under its mark). Further the actual copying from the Complainant's web site appears to show actual knowledge of the Complainant and its business. See Rosemount Inc. and Emerson Electric co v 12 JonWeb Technology Trade CO. LTD c/o Zheng Yu Chang, FA 1510569 (Nat. Arb. Forum August 24, 2013) ('Respondent has a thorough knowledge of Complainant’s brand and business, since it has directly copied Complainant's logos and advertising material. Therefore the Respondent finds that the Respondent had actual knowledge of the mark and Complainant's rights, additional evidence of bad faith under the Policy 4(a)(iii). As such there is no need to consider the addition allegations of bad faith through use of a privacy service and failing to answer a cease and desist letter and the panelist finds that the Domain Name has been registered and used in bad faith under Policy 4(a)(iii) and (iv). .
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bobcatmanual.com> domain name be TRANSFERRED from Respondent to Complainant
Dawn Osborne, Panelist
Dated: March 22, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page