Clark Equipment Company v. Christopher Walls / Bobcat Rentals Co.
Claim Number: FA1808001804358
Complainant is Clark Equipment Company (“Complainant”), represented by Jordan R. Downham of Quarles & Brady LLP, Indiana, USA. Respondent is Christopher Walls / Bobcat Rentals Co. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bobcatrentalsco.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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on August 31, 2018; the Forum received payment on August 31, 2018.
On September 4, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bobcatrentalsco.com> domain name (the “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 September 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 26, 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@bobcatrentalsco.com. Also on September 6, 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 October 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 does business as Bobcat Company and is a leading provider of compact equipment for construction, landscaping and agriculture. Complainant has registered its BOBCAT mark with the United States Patent and Trademark Office (“USPTO”) on many occasions for various types of equipment and machinery, and parts and accessories for them, beginning with its Registration No. 670,566, dating from December 2, 1958. Respondent’s Domain Name is confusingly similar to Complainant’s mark because it includes the entire BOBCAT mark, only adding the descriptive terms “rentals” and “co,” the latter being a common abbreviation for “company,” and the generic top-level domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in the Domain Name. He is not using the Domain Name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use but instead, without authorization from Complainant, is using Complainant’s mark as incorporated into the Domain Name to attract Internet users to a website for a business that offers products manufactured by Complainant’s competitors as well as by Complainant. Further, Respondent is not commonly known by the Domain Name.
Respondent registered and uses the Domain Name in bad faith. Respondent had actual knowledge of Complainant’s rights in the BOBCAT mark prior to registering the Domain Name. Further, Respondent is using the Domain Name to attract Internet users to its web site by creating a likelihood of confusion with Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations 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.”).
The Panel finds as follows with respect to the matters at issue herein.
Complainant registered its BOBCAT mark with the USPTO (Reg. No. 670,566) on December 2, 1958. See Complaint Exhibit C. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s Domain Name is confusingly similar to Complainant’s BOBCAT mark. It incorporates the mark in its entirety only adding the descriptive terms “rentals” and “co” as an abbreviation for company. The addition of descriptive terms is insufficient to distinguish a Domain Name from a complainant’s mark for the purposes of Policy ¶ 4(a)(i). King Ranch IP, LLC v. E Miller, FA 1785596 (Forum June 6, 2018) (“Complainant’s trademark is used in-part with regard to barbecue related goods and services; the term “bbq” is thus suggestive of the KING RANCH trademark. Therefore, the Panel finds that the <kingranchbbq.com> domain name is confusingly similar to Complainant’s KING RANCH mark.”). Additionally, the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i) analysis. See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark).
For the reasons discussed above, the Panel finds that the Domain Name is confusingly similar to the BOBCAT mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not affiliated with or authorized by Complainant to use Complainant’s mark in any way, (ii) he is not commonly known by the Domain Name, and (iii) he is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because he is using it to attract Internet users seeking Complainant to his web site, which advertises his business of renting all types and brands of equipment, including those manufactured by Complainant’s competitors. These allegations are supported by competent evidence.
According to the WHOIS record submitted as Complaint Exhibit B, the registrant of the Domain Name is “Christopher Walls” and the registrant organization is “Bobcat Rentals Co.” The name Christopher Walls bears no resemblance to the Domain Name. Where a response is lacking, relevant WHOIS information may be used to identify a respondent for the purposes of Policy ¶ 4(c)(ii). State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. 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).
As stated above, the WHOIS record identifies the registrant organization for the Domain Name as “Bobcat Rentals Co.” Also, it appears from the web site of the State of Washington Secretary of State that a business corporation by that name was organized in November 2011 and that Respondent Christopher Walls was its registered agent. See, Complaint Exhibit I. That record shows that the company was dissolved administratively in March 2013, but it is still evidence that at least from 2011 until 2013 Respondent was doing business under that name. Complaint Exhibit H is a screenshot of the web site resolving from the Domain Name as of August 27, 2018. It prominently displays the name “Bobcat Rentals Co.” as the sponsor of the site and is clear evidence that regardless of the administrative dissolution of the corporation Respondent is currently doing business under that name.
Nevertheless, Complainant has stated that it never authorized Respondent to use its BOBCAT mark, and that Respondent has never been an authorized dealer of BOBCAT products. Complainant has specific competence to make these statements, and they are unchallenged by any evidence before the Panel. As argued by Complainant, the fact that Respondent may have organized a business corporation using the name BOBCAT still fails to qualify him as having been commonly known by that name for the purposes of Policy ¶ 4(c)(ii) because (1) Respondent organized that corporation in 2011, long after Complainant acquired rights in the BOBCAT mark, and (2) Complainant never authorized him to use that mark for any purpose. Microsoft Corporation v. MICROSOFT ENGINEERING TEAM SCANDANAVIA et al., FA 1703001719641 (Forum Apr. 14, 2017) (finding that, although the WHOIS information for the disputed domain names included “Microsoft” in the name of the respondent, the respondent had not been commonly known by the disputed domain name under Policy ¶ 4(c)(ii) because it was not authorized or licensed by the complainant to use the MICROSOFT or MS marks in a business name or domain name), Augusta National, Inc. v. Ryan Carey, FA 171001758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated. Respondent’s appropriation of Complainant’s GREEN JACKET mark for his Domain Name was wrongful, and it was equally wrongful for him to use it in the name of his company. It would defy the obvious intent of the Policy to permit any respondent to benefit from this type of manipulation.”). The fact that Respondent is doing business under the name “Bobcat Rentals Co.” does not qualify him as being commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Further, the Complaint Exhibit J described above and Complaint Exhibit H, which is a screenshot of the web site resolving from the Domain Name, clearly demonstrate that Respondent’s business consists of renting many types and brands of equipment. Featured prominently on the Exhibit H screenshot, for example, is a picture of a compact Caterpillar front-end loader. Respondent is clearly using the Domain Name to attract Internet users to his business, which rents competing products, by falsely suggesting a relationship with Complainant. UDRP panels have consistently held that this does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar Domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)), Clark Equipment Co. v. Ted Corriher, FA 1005001324035 (Forum June 24, 2010) (finding that the domain name <bobcatattachmentsonline.com> falsely implied that complainant endorsed respondent’s goods, and concluding that “[it] is complainant alone that has the right to identify itself as the source of BOBCAT goods, and to control the use of its trademarks online, in domain names, and anywhere else it chooses.”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration. Given the notoriety of Complainant and its mark, and the fact that the Domain Name incorporates that mark verbatim, it is obvious that Respondent had actual knowledge of Complainant and its BOBCAT mark when he registered the Domain Name on November 2, 2011. (See, Complaint Exhibit B for date of registration.). Policy 4(b) recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith for the purposes of Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Further, Respondent’s conduct as described above demonstrates that he registered and is using the Domain Name to disrupt Complainant’s business. Complaint Exhibit J, a printout of the Google Search and Google Maps web sites, shows that a Google search for “Bobcat of Seattle,” which Complainant says is the name of the authorized BOBCAT dealer in the Seattle, Washington area, produces Respondent’s business as the first result. Thus, Internet users seeking a Bobcat dealer in that area would be diverted to Respondent’s business rather than to Complainant’s authorized dealer. This is a clear disruption of Complainant’s business as articulated by Policy ¶ 4(b)(iii).
These same facts demonstrate that Respondent is registered and is using the Domain Name to attract, for commercial gain, Internet users to his website and business by creating a likelihood of confusion as to the source sponsorship, affiliation, or endorsement of his web site and business within the meaning of Policy ¶ 4(b)(iv). Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bobcatrentalsco.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
October 3, 2018
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