MTD Products Inc v. Milaca Lawn & Garden, LLC
Claim Number: FA1801001765113
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Milaca Lawn & Garden, LLC (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubcadetparts.net>, registered with Network Solutions, LLC.
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 Forum electronically on December 31, 2017; the Forum received payment on December 31, 2017.
On January 2, 2018, Network Solutions, LLC confirmed by e-mail to the Forum that the <cubcadetparts.net> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 January 3, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 23, 2018 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@cubcadetparts.net. Also on January 3, 2018, 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 January 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the CUB CADET mark, Complainant is a worldwide market leader in the design, manufacture and sale of outdoor power equipment, including walk-behind lawnmowers, riding lawnmowers and tractors, snow throwers, edgers, chipper/shredders, log splitters, tillers and related parts.
Complainant registered the CUB CADET mark with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,252,738, registered October 4, 1983, second renewal October 3, 2013).
Respondent registered the domain name <cubcadetparts.net> on or about January 26, 2007.
The domain name is confusingly similar to Complainant’s CUB CADET mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the CUB CADET mark in a domain name.
At one time, Respondent was authorized to perform service on CUB CADET outdoor power equipment purchased through big box retailers, but this relationship has been terminated.
On October 13, 2017, Complainant sent to Respondent a cease and desist letter pertaining to the registration and use of the domain name.
To date, Complainant has not yet received a response from Respondent.
Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to confuse Internet users into believing that Respondent and its resolving website are affiliated with or otherwise approved by Complainant.
Respondent uses the domain name to seek commercial gain.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in the CUB CADET mark, and Respondent’s <cubcadetparts.net> domain name is confusingly similar to that mark.
2. Complainant has failed to demonstrate that Respondent lacks rights to or legitimate interests in that domain name.
3. Complainant has failed to show that Respondent registered the domain name 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 to or legitimate interests in respect of the domain name; and
(3) the same domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 CUB CADET trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <cubcadetparts.net> domain name is confusingly similar to Complainant’s CUB CADET trademark. The domain name contains the mark in its entirety, save only for the omission of the space between its terms and the addition of the generic term “parts,” which relates to an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.net.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017):
The … elimination of spacing [from the mark of another in creating a domain name is] considered irrelevant when distinguishing between a mark and a domain name.
See also YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum August 10, 2016) (finding that the words “powder coating” included in the <yetipowdercoating.com> domain name were “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” with a UDRP complainant’s YETI mark).
Further, see Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum August 1, 2016):
A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces [eliminated from the terms of a mark in forming a domain name] must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <cubcadetparts.net> 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 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant contends that Respondent has no rights to or legitimate interests in the <cubcadetparts.net> domain name. In support of its contention, Complainant asserts that Respondent has not been commonly known by the challenged domain name. The relevant WHOIS information bears this out in that it shows that the registrant of the domain name is identified only as “Milaca Lawn & Garden, LLC,” which does not resemble the domain name. Respondent therefore cannot claim shelter under the terms of Policy ¶ 4(c)(ii). See, for example, Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the domain name <chevron-europe.com>, and therefore failed to demonstrate that it had rights to or legitimate interests in the domain name as provided in that subsection of the Policy, where the relevant WHOIS information identified the registrant of that domain name only as “Fred Wallace.”
However, a separate question arises as to whether Respondent, before receiving notice of the current dispute, used the contested domain name “in connection with a bona fide offering of goods or services.” If the answer to this question is “Yes,” Respondent may lay claim to rights to or legitimate interests in the domain name under the provisions of Policy ¶ 4(c)(i).
Apropos of this question, the Complaint reveals that Respondent registered the domain name in 2007, at which time Respondent functioned as “an authorized repair center of Complainant’s CUB CADET branded outdoor power equipment;….” Complainant contends that that relationship has since ended. But, on the facts before us, the current state of that relationship is not controlling. What matters for purposes of this proceeding is whether Respondent had a legitimate right to or interest in the domain name when it was first registered. And, from the record supplied by Complainant, it appears that Respondent did.
Complainant attempts to brush aside this pivotal fact by reference to the familiar four-factor test set out in Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO November 6, 2001). But that decision, and its underlying rationale, are inapposite where, as here, the parties had, at the time of creation of the domain name, a contractual relationship which at least impliedly permitted Respondent to register the domain name in service of the mutual interests of the parties. Such a permitted use of the domain name is labeled fair use, or, sometimes, “nominative fair use.” In this connection, it is significant that, although the contract between Complainant and Respondent apparently concluded at the end of 2009, Complainant did not commence this proceeding until the beginning of 2018, eight years after the relationship had ended, and fully eleven years after the domain name was first registered. Inasmuch as it is clear that Complainant knew of Respondent and its business model throughout, and, there being nothing in the record to suggest that Respondent did anything to conceal the domain name or its resolving website from Complainant, an inference that Complainant knew of it and found no fault with it naturally follows.
Nonetheless, Complainant now critiques the website resolving from the disputed <cubcadetparts.net> domain name, claiming that Respondent is not using it “to sell any CUB CADET branded equipment and/or replacement parts.” This assertion appears to be incorrect, in that the screenshot of the resolving site appended to the Complaint refers to “MTD Parts” in two places.
Complainant also assails the website on the grounds that the site does not contain an express disclaimer of any formal relationship with it. This is true. But it is also true that the site does not appear to hold Respondent out as being an “authorized” or “certified” dealer for or agent of Complainant, nor does it suggest any other official connection with Complainant.
Complainant likewise takes issue with the fact that Respondent offers on the site repair parts for the equipment of Complainant’s trade competitors. While this is true, there is nothing in the record to indicate that Respondent uses the site to facilitate “bait and switch” marketing. And, given that the <cubcadetparts.net> domain name and its resolving site emphasize the sale of “parts” (the site contains more than forty (40) iterations of the word “parts”), it seems unlikely that an Internet user wanting or needing CUB CADET parts would visit the site, and, once there, be moved instead to buy parts designed for a competitor’s machine.
The case before us has elements in common with those laid out in Samsung Electronics Co., Ltd. v. Gestion Integral Inovages, Case No. D2012-0570 (WIPO
May 10, 2012). There a panel recited that:
[I]t seems to this Panel that Respondent is displaying the … mark precisely to offer products bearing such trademark and not to hold itself out as if it were officially connected to Complainant or to otherwise engage in bait and switch activities with other non-[Complainant] branded products. Thus this Panel does not on balance find that Internet users are more likely than not to believe they are dealing with an authorized agent of Complainant or that such website corresponds to Complainant’s official site, or that Internet users are in fact being misleadingly offered goods competitive with those of Complainant via the disputed domain name.
Having reached that conclusion, the panel in Samsung went on to find as follows:
[T]his Panel considers that Complainant has not established that Respondent lacks rights or legitimate interests in the disputed domain name. For purposes of the Policy, the opposite may in fact be concluded from the documentation that is on the present record as on its face it seems … that Respondent is conducting a bona fide offering of products as per Paragraph 4(c)(i) of the Policy. Therefore, this Panel finds that Complainant failed under paragraph 4(a)(ii) of the Policy.
Like the Panel in Samsung, we conclude that Complainant here has failed to satisfy the proof requirements of Policy ¶ 4(a)(ii).
Critical to Complainant’s position that Respondent should be found to have demonstrated bad faith in relation to the contested <cubcadetparts.net> domain name is the requirement of Policy ¶ 4(a)(iii) that Complainant show, separately, both that Respondent registered, and that it has since used, the domain name in bad faith. A failure to demonstrate that the domain name was registered in bad faith must thus be fatal to Complainant’s claim, even if its subsequent use were to be in bad faith. See, for example, Platterz v. Andrew Melcher, FA 1729887 (Forum June 19, 2017):
Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.
On the facts before us, we have concluded that Respondent was, from the time of its initial registration of the domain name, using it, under the protection of the doctrine of (nominative) fair use, to conduct a bona fide offering of goods within the ambit of ¶ 4(a)(ii) of the Policy. It follows that Respondent did not register the domain name in bad faith. This, without more, brings to an end Complainant’s challenge to the domain name. See, for example, ITT Mfg. Enterprises, Inc. v. Nicoll, Case No. D2008-0936 (WIPO November 7, 2008):
[T]he Panel finds that the Respondents have from the beginning possessed a legitimate interest in making nominative use of the … mark …; consequently, this use does not reflect bad faith.
We therefore find that Complainant has failed to meet its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having failed to establish two of the three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, DENIED.
Accordingly, it is Ordered that the <cubcadetparts.net> domain name REMAIN with Respondent.
Terry F. Peppard, Panelist
Dated: February 2, 2018
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