Clark Equipment Company v. Jared Oliver
Claim Number: FA1803001775069
Complainant is Clark Equipment Company (“Complainant”), represented by Heather S. Stutz of Quarles & Brady LLP, Wisconsin, USA. Respondent is Jared Oliver (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <reddingbobcat.com>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2018; the Forum received payment on March 8, 2018.
On March 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <reddingbobcat.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 March 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 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@reddingbobcat.com. Also on March 9, 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 March 30, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Clark Equipment Company, is a leading global provider of compact equipment for construction, landscaping, agriculture, and related goods and services. Complainant has rights in the BOBCAT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 670,566, registered Dec. 2, 1958).
2. Respondent’s <reddingbobcat.com>[1]domain name is confusingly similar to Complainant’s BOBCAT mark as Respondent adds the geographic term “redding” and a “.com” generic top level domain (“gTLD”) to the mark.
3. Respondent has no rights or legitimate interests in the <reddingbobcat.com> domain name. Respondent is not authorized or licensed to use Complainant’s BOBCAT mark and is not commonly known by the domain name. Additionally, Respondent is attempting to pass off as Complainant by prominently displaying Complainant’s BOBCAT mark at the resolving website of the domain name.
4. Respondent registered and is using the <reddingbobcat.com> domain name in bad faith. Respondent attempts to divert users to the resolving website, presumably for commercial gain, and this constitutes bad faith.
5. Furthermore, Respondent had actual knowledge of Complainant’s rights in the BOBCAT mark at the time Respondent registered the <reddingbobcat.com> domain name and this indicates bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the BOBCAT mark. Respondent’s domain name is confusingly similar to Complainant’s BOBCAT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <reddingbobcat.com> domain name and that Respondent registered and uses 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 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 has rights in the BOBCAT mark through its trademark registrations with the USPTO (e.g., Reg. No. 670, 566, registered Dec. 2, 1958). Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Therefore, the Panel finds Complainant has sufficiently demonstrated its rights in the BOBCAT mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <reddingbobcat.com> domain name is confusingly similar to Complainant’s BOBCAT mark as Respondent adds a geographic term and gTLD to the mark. Respondent adds the term “redding,” which presumably alludes to Redding, California, and a “.com” gTLD to Complainant’s BOBCAT mark. Complainant provides a copy of its authorized website, <bobcatofredding.com>, which is the website for Complainant’s operations in Redding, California. These changes do not negate any confusing similarity between Respondent’s domain name and Complainant’s mark under Policy ¶ 4(a)(i). See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Therefore, Respondent’s <reddingbobcat.com> domain name is confusingly similar to Complainant’s BOBCAT mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <reddingbobcat.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <reddingbobcat.com> domain name as Respondent is not authorized or licensed to use Complainant’s BOBCAT mark and is not commonly known by the domain name. In the event a respondent fails to submit a response, WHOIS information may be used to determine whether a respondent is commonly known by a domain name per Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Complainant provides a copy of the WHOIS information for the <reddingbobcat.com> domain name which identifies Respondent as “Jared Oliver.” Thus, the Panel finds Respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant contends Respondent is not using the <reddingbobcat.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent attempts to pass off as Complainant. Passing off as a complainant by prominently displaying a complainant’s mark at a resolving website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant provides a screenshot of the resolving website which features information about construction and a “Bobcat” tractor. Therefore, the Panel finds Respondent attempts to pass off as Complainant which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues Respondent is intentionally diverting users to the <reddingbobcat.com> domain name, presumably for commercial gain, and this indicates bad faith. The Panel agrees. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). As noted above, Respondent’s resolving website shows a “Bobcat” tractor and offers construction services. Therefore, the Panel determines that Respondent has engaged in bad faith registration and use per Policy ¶ 4(b)(iv).
Finally, Complainant contends Respondent had actual knowledge of Complainant’s rights in the BOBCAT mark at the time Respondent registered the <reddingbobcat.com> domain name and this is evidence of bad faith. iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues Respondent’s prominent displaying of Complainant’s products, which show the BOBCAT mark and logo, indicates Respondent had actual knowledge of Complainant’s rights to the BOBCAT mark. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the BOBCAT mark at the time Respondent registered the <reddingbobcat.com> domain name which demonstrates bad faith registration and use per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <reddingbobcat.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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