MTD Products Inc v. Domain Administrator / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1702001719083
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troybiltmowers.com>, registered with Gransy, s.r.o. d/b/a subreg.cz.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2017; the Forum received payment on February 27, 2017.
On February 28, 2017, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <troybiltmowers.com> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 March 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2017 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@troybiltmowers.com. Also on March 2, 2017, 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 April 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 designs and manufactures for sale to the consuming public lawnmowers, walk-behind lawnmowers, riding lawnmowers and tractors, etc. Complainant holds several registrations for the TROY-BILT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,289,838, registered Aug. 14, 1984), demonstrating rights. Respondent’s <troybiltmowers.com> incorporates the mark fully, eliminates the hyphen, adds the generic/descriptive term “mowers” and the generic top-level domain (“gTLD”) “.com”—creating confusing similarity with the TROY-BILT mark.
Respondent has no rights or legitimate interests in <troybiltmowers.com>. Respondent is not commonly known by <troybiltmowers.com> based on the WHOIS of record. Further, while Respondent merely uses the domain name in connection with an offer for sale, or to redirect Internet users to <homedepot.com>, which competes with Complainant and is not a bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered and used <troybiltmowers.com> in bad faith. Respondent intends to sell the domain name for a price in excess of out-of-pocket costs per Policy ¶ 4(b)(i). Respondent’s competitive use of the domain name disrupts the business of Complainant under Policy ¶ 4(b)(iii). Further, Respondent’s confusingly similar domain name violates Policy ¶ 4(b)(iv). Lastly, Respondent registered the domain name with actual or constructive knowledge of the TROY-BILT mark and Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is MTD Products Inc of Valley City, Ohio, USA. Complainant is the owner of the domestic registration for the mark TROY-BILT, which it has continuously used since at least as early as 1967, in connection with its global production and sale of outdoor power equipment, such as personal, commercial and industrial mowers. In addition to its operation in real space, Complainant also markets its goods and services via internet commerce from its website <troybuilt.com>.
Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o., of Praha, Czech Republic. Respondent’s registrar’s address is listed as Prague, Czech Republic. The Panel notes that <troybiltmowers.com> was registered on or about April 23, 2006.
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 (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 designs and manufactures for sale to the consuming public lawnmowers, walk-behind lawnmowers, riding lawnmowers and tractors, etc. Complainant has registered the TROY-BILT mark with the USPTO (e.g., Reg. No. 1,289,838, registered Aug. 14, 1984). Past panels have found USPTO registrations satisfactory in conferring rights under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)) [hereinafter, the “Beyoncé case”]. The Panel here finds that Complainant’s USPTO registration satisfies the requirement of Policy ¶ 4(a)(i).
Complainant contends Respondent’s <troybiltmowers.com> incorporates the TROY-BILT mark fully, eliminates the hyphen, adds the generic/descriptive term “mowers” and the gTLD “.com”—creating confusing similarity with the TROY-BILT mark. Such alterations have met findings of confusing similarity in past disputes. See Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel here finds that the addition of the word “mowers” is an obvious allusion to Complainant’s business, and coupled with the elimination of the hyphen and addition of “.com” do not distinguish the domain name from the mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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 (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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <troybiltmowers.com>. Complainant notes that the domain name does not reflect Respondent’s name, so Respondent cannot be considered commonly known by the domain name. WHOIS information has been relied upon where a respondent has failed to submit a response. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS here lists “Domain Administrator / Whois protection, this company does not own this domain name s.r.o.,”. The Panel here finds that Respondent is not commonly known by <troybiltmowers.com>.
Further, Complainant contends that Respondent causes the domain name to redirect Internet users to <homedepot.com>, which competes with Complainant and is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. Prior panels have found that competitive use may show a lack of rights and legitimate interests. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Complainant has met its prima facie burden under this prong of the Policy.
Additionally, Complainant argues that one of Respondent’s uses is for an offer for sale to the general public. Such use has been considered additional evidence weighing against a respondent’s interests under Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Evidence indicates Respondent has presumably listed the domain for sale for $5,750. The Panel here finds that this evidence weighs against Respondent’s rights and legitimate interests under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant avers Respondent registered and used <troybiltmowers.com> in bad faith. Firstly, Complainant asserts that Respondent intends to sell the domain name for a price in excess of out-of-pocket costs per Policy ¶ 4(b)(i). General offers for sale have been found to violate Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The Panel here finds that Complainant’s evidence supports a finding of Policy ¶ 4(b)(i).
Next, Complainant argues that Respondent’s competitive use of the domain name disrupts the business of Complainant under Policy ¶ 4(b)(iii) and that Respondent likely commercially gains from its deceptive use under Policy ¶ 4(b)(iv). Previous panels have held respondents redirection for competitive gain to evince bad faith under both prongs of the Policy. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant alleges Respondent causes the domain name to redirect Internet users to <homedepot.com>, a competitor of Complainant. The Panel here finds Respondent’s use disruptive, and presumably for commercial gain, imputing both Policy ¶¶ 4(b)(iii) and (iv) registration and use in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <troybiltmowers.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 19, 2017
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