The Toro Company v. nate mullen
Claim Number: FA1803001776342
Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne of The Toro Company, Minnesota, USA. Respondent is nate mullen (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uniquelightingsystem.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018.
On March 19, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <uniquelightingsystem.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 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 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@uniquelightingsystem.com. Also on March 22, 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 April 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, The Toro Company, is one of the world’s leading manufacturers of outdoor lighting products, outdoor power equipment, and construction equipment. Complainant owns a registration for its UNIQUE LIGHTING SYSTEMS mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,429,121, registered May 20, 2008). Respondent’s <uniquelightingsystem.com> domain name is identical and confusingly similar to Complainant’s UNIQUE LIGHTING SYSTEMS mark.
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name at issued based on the WHOIS information of record. Further, Respondent does not use the at issue domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name diverts Internet users to Respondent’s own website for commercial benefit.
iii) Respondent registered and used the disputed domain name in bad faith by disrupting Complainant’s business. Further, Respondent’s diversion of Internet traffic to its own website demonstrates bad faith under Policy ¶ 4(b)(iv). Respondent’s registration was also opportunistic and Respondent had actual knowledge of Complainant’s rights to its UNIQUE LIGHTING SYSTEMS mark.
B. Respondent
Respondent did not submit a Response.
1. Complainant has established rights to its UNIQUE LIGHTING SYSTEMS mark through registration with the USPTO (Reg. No. 3,429,121 registered May 20, 2008).
2. Respondent registered the <uniquelightingsystem.com> domain name on June 30, 2017.
3. Resolving website of the disputed domain name offers similar products to those offered by Complainant.
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 claims rights to its UNIQUE LIGHTING SYSTEMS mark through registration with the USPTO (Reg. No. 3,429,121 registered May 20, 2008). See Compl. Ex. 1. Registration of a mark with the USPTO is sufficient to demonstrate rights to a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Accordingly, the Panel finds Complainant’s registrations with the USPTO demonstrate rights to its mark.
Next, Complainant argues Respondent’s <uniquelightingsystem.com> domain name is confusingly similar to its mark. Per Policy ¶ 4(a)(i), a domain name can be confusingly similar to a complainant’s mark where said mark is incorporated entirely into the domain name with insufficient changes. See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also YETI Coolers, LLC v. Brock Hutchinson , FA 1606001679922 (Forum Aug. 11, 2016) (holding that the relevant question [under Policy ¶ 4(a)(i)] is not… whether the domain name has caused confusion, but the abstracted question of whether the domain name is confusingly similar to the trademark, regardless of use. Similarly, argument about whether the intended future possible use of the domain name will cause actual confusion or not is irrelevant for the purposes of paragraph 4(a)(i) of the Policy.). Complainant asserts consumers could confuse the disputed domain name as being affiliated with or sponsored by Complainant. As a result, the Panel finds Respondent’s domain name at issue is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent has no rights or legitimate interests in the <uniquelightingsystem.com> domain name as Respondent is not commonly known by the domain name. A respondent can be found not to be commonly known by a domain name based on the WHOIS information of record. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Here, Complainant indicates the WHOIS information of record does not show Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information of record names “nate mullen” as the registrant of the disputed domain name. Accordingly, the Panel finds Respondent is not commonly known by the domain name at issue per Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent does not use the <uniquelightingsystem.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use, as instead Respondent is using Complainant’s mark to attract Internet users to Respondent’s website for Respondent’s commercial benefit. Such use is typically found by Panels not to be in accordance with Policy ¶¶ 4(c)(i) and (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 notes Exhibit 8, as indicated by Complainant, is a screenshot of the disputed domain name’s redirection to the domain name <directlol.com>. See Compl. Ex. 8. Consequently the Panel finds Respondent’s use of the disputed domain name is not in accordance with Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Per Policy ¶ 4(b)(iii), Complainant argues Respondent registered and used the <uniquelightingsystem.com> domain name in bad faith. Under Policy ¶ 4(b)(iii), a domain name can be found to have been registered and used in bad faith where it offers competing goods. See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Here, Complainant’s Vice President states the domain name at issue disrupts Complainant’s business. See Compl. Ex. 7. Further, Complainant has provided screenshots of the disputed domain name’s resolving website which offers similar products to those offered by Complainant. Compare Compl. Ex. 8 (Respondent’s resolving website) with Compl. Ex. 2 (Complainant’s website). As a result, the Panel finds Respondent disrupted Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Per Policy ¶ 4(b)(iv), Complainant contends Respondent registered and used the <uniquelightingsystem.com> domain name in bad faith. Under Policy ¶ 4(b)(iv), a domain name can be found to have been registered and used in bad faith where a respondent’s use of it is to direct Internet traffic to the respondent’s website. See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). Here, Complainant indicates Respondent’s website directs Internet users who are searching for Complainant to Respondent’s website, and features Complainant’s mark. See Compl. Ex. 7. Accordingly, the Panel finds Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(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 <uniquelightingsystem.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 20, 2018
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