MTD Products Inc v HARINDER SINGH
Claim Number: FA1808001802139
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is HARINDER SINGH (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubcadet.parts>, registered with Uniregistrar Corp.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 19, 2018; the Forum received payment on August 20, 2018.
On August 20, 2018, Uniregistrar Corp confirmed by e-mail to the Forum that the <cubcadet.parts> domain name is registered with Uniregistrar Corp and that Respondent is the current registrant of the name. Uniregistrar Corp has verified that Respondent is bound by the Uniregistrar 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 August 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@cubcadet.parts. Also on August 21, 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 September 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, 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
Complainant registered the CUB CADET mark with the United States Patent and Trademark Office (“USPTO”) and has used the mark since 1960 in relation to the design, manufacture, and worldwide sale of outdoor power equipment. Respondent’s <cubcadet.parts> domain name was registered in 2014 and is identical and confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before removing the space and appending the “.parts” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cubcadet.parts> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not make a bona fide offering of goods or services with the disputed domain name nor does it make a legitimate noncommercial or fair use thereof. Instead, Respondent passively holds the disputed domain name while attempting to sell it through a registrar brokerage website to which users are automatically redirected.
Respondent registered and uses the <cubcadet.parts> domain name in bad faith where it is either passively held or offered for sale. Respondent thus creates a likelihood of confusion between Respondent and Complainant for Respondent’s commercial gain. Respondent’s offering to sell the disputed domain name also disrupts Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 asserts rights in the CUB CADET mark based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently confers on a complainant rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Based on Complainant’s submitted evidence of its USPTO registrations on the principal register, the Panel finds that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Next, Complainant argues that Respondent’s <cubcadet.parts> domain name is identical and confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before removing the space and appending the “.parts” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 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 must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”) See also See also, MTD Products Inc. v. Dilmurot Adilboev, FA 1793676 (Forum July 20, 2018) (the disputed domain name CubCadet.pro was held to be confusingly similar to the CUB CADET mark).
In light of the above, the Panel finds that the <cubcadet.parts> domain name is identical or confusingly similar to the CUB CADET mark under Policy ¶4(a)(i).
The 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). The burden then shifts to Respondent to show that 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 that Respondent has no rights or legitimate interests in the <cubcadet.parts> domain name. Complainant points out that the <cubcadet.parts> domain name automatically redirects users to a website that is operated by the concerned registrar and is titled “Domain Buy Service”. The page contains a form in which the <cubcadet.parts> domain name is pre-populated in a field titled “Enter the domain name you would like to acquire” and the rest of the blank fields on the page ask for the name and contact information of the inquiring party. Where a domain name is identical or confusingly similar to a well-known trademark yet resolves only to a “for sale” page UDRP Panels have held that this does not constitute a bona fide offering of goods or services or a fair use by a respondent. In Collective Brands Cooperatief U.A. v. ecole c/o Eric Cole. Claim No. FA 1328023 (Forum July 8, 2010) the Panel found that “general offers to sell the disputed domain name do not establish a bona fide offering of goods or services or a legitimate noncommercial or fair use in keeping with Policy ¶¶ 4(c)(i) or 4(c)(iii)”, citing Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Forum May 27, 2003) (the respondent’s apparent willingness to dispose of the disputed domain name suggested that it lacked rights or legitimate interests), and Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO August 11, 2000) (finding that the respondent’s conduct purporting to sell the domain name suggests that it has no legitimate use for the name). In the absence of a response or other submission by the Respondent, the Panel finds that, with regard to the <cubcadet.parts> domain name, the Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i), or to make a legitimate noncommercial or fair use of the domain name per Policy ¶ 4(c)(iii).
Next, Complainant submits evidence that the <cubcadet.parts> domain name redirects users to another website that lacks any substantive content beyond the for sale notice and purchase inquiry form. There is no mention of Complainant or any content relating to parts for its products. Failure to make an active use of a confusingly similar domain name can substantiate a finding that the respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) & (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… 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.”)
Finally, Complainant asserts that the Respondent is not commonly known by the <cubcadet.parts> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS information of record here identifies “Harinder Singh” as the registrant of the <cubcadet.parts> domain name. Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. There is no other evidence or submission by Respondent to the contrary. Accordingly, the Panel agrees that Respondent is not commonly known by the <cubcadet.parts> domain name under Policy ¶ 4(c)(ii).
In light of the evidence presented and in the absence of any response, evidence, or other submission by the Respondent, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(a)(ii).
Complainant asserts that Respondent intentionally used the CUB CADET mark without consent from Complainant and was put on actual notice of Complainant’s rights in the mark through its extensive global use thereof which long predates the creation of the <cubcadet.parts> domain name. Prior Panels have found that the CUB CADET mark is well known. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“Complainant’s trademark is well known.”); MTD Products Inc. v Dilmurot Adilboev, FA 1793676 (Forum July 20, 2018) (“Complainant owns the mark CUB CADET... The mark is well known.”) In light of these holdings, the evidence submitted in this case by Complainant, the distinctiveness of the trademark, and Respondent’s use of the “.parts” gTLD, the Panel finds that it is more likely than not that Respondent created its domain with prior knowledge of the CUB CADET mark.
Next, Respondent has no website affiliated with the <cubcadet.parts> domain name and has merely and automatically redirected users to a registrar page at which the domain name is offered for sale for Respondent’s commercial gain. Such use has been held to demonstrate a respondent’s bad faith intent to profit from confusion with a complainant’s well known trademark. See Collective Brands Cooperatief U.A. v. ecole c/o Eric Cole, supra., (“The Panel finds that Respondent’s willingness to sell the disputed domain name without using it for any other legitimate purpose indicates that Respondent purchased the disputed domain name with the intent to sell it, which shows bad faith registration and use according to Policy ¶ 4(b)(i).”), citing, Bank of America Corporation v. Northwest Free Community Access, FA 180704 (Forum September 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”) and America Online, Inc. v Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Forum March 16, 2000) (finding bad faith where the respondent offered domain names for sale). This Panel finds that Respondent’s actions in attempting to sell the <cubcadet.parts> domain name are similar to those of the above-cited cases in that it is either attempting to sell the domain to Complainant or its competitors, or it is using a confusingly similar domain name to attract users for commercial gain. As such, it is determined that the domain name has been registered and used in bad faith under Policy ¶¶ 4(b)(i) and (iv).
Lastly, Complainant claims that Respondent disrupts Complainant’s business by inactively holding the <cubcadet.parts> domain name, as Respondent fails to use the disputed domain name for any real purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”) In this case the lack of any substantive or legitimate use of the <cubcadet.parts> domain name further supports the conclusion that Respondent has registered and used the domain name in bad faith.
Based upon the arguments and evidence submitted and given the lack of any response, evidence, or other submission by the Respondent, the Panel finds that the <cubcadet.parts> domain name was registered and is being used in bad faith under 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 <cubcadet.parts> domain name be TRANSFERRED from Respondent to Complainant.
September 17, 2018, Panelist
Dated: Steven M. Levy, Esq.
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