MTD Products Inc v. Abdullah Mahmud Ashik / SARDAH.COM
Claim Number: FA1903001832254
Complainant is MTD Products Inc ("Complainant"), represented by Christopher A. Corpus, Ohio, USA. Respondent is Abdullah Mahmud Ashik / SARDAH.COM ("Respondent"), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troybiltsnowblower.com>, registered with NameCheap, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2019; the Forum received payment on March 1, 2019.
On March 1, 2019, NameCheap, Inc. confirmed by email to the Forum that the <troybiltsnowblower.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@troybiltsnowblower.com. Also on March 6, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a leading global manufacturer of outdoor power equipment, and has used the TROY-BILT trademark in connection with such products, including snow throwers (also known as snowblowers), since 1967. Complainant owns numerous U.S. trademark registrations for TROY-BILT and related marks.
Respondent registered the disputed domain name <troybiltsnowblower.com> through a privacy registration service in December 2018. Complainant states that Respondent is not commonly known by the disputed domain name, and that Complainant has not licensed nor otherwise authorized Respondent to use the TROY-BILT mark. The domain name is being used for a website that purports to provide reviews or other information about Complainant's products, along with links to pages on Amazon.com that promote Complainant's products, those of competitors, and unrelated products. In response to a demand letter from Complainant, Respondent acknowledged that the purpose of the website is to earn money from Amazon affiliate commissions, and offered to transfer it to Complainant in exchange for approximately US $14,000.
Complainant contends on the above grounds that the disputed domain name <troybiltsnowblower.com> is confusingly similar to its TROY-BILT mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Management, 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 disputed domain name <troybiltsnowblower.com> incorporates Complainant's registered TROY-BILT trademark, omitting the hyphen and adding the generic term "snowblower" (a class of products that Complainant markets under the mark) and the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., MTD Products Inc v. Domain Administrator / Whois protection, this company does not own this domain name s.r.o., FA 1719083 (Forum Apr. 19, 2017) (finding <troybiltmowers.com> confusingly similar to TROY-BILT); MTD Products Inc v. Domain Administrator / United Privacy Corp, FA 1678603 (Forum July 14, 2016) (finding <cubcadetsnowblowers.com> confusingly similar to CUB CADET). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website whose purpose is to generate commissions from affiliate links to products offered for sale through Amazon.com, including products that compete directly with Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Amazon Technologies, Inc. v. David Sutton, FA 1795497 (Forum July 30, 2018) (finding lack of rights or legitimate interests where domain name was used to promote competing products, presumably generating referral fees for respondent); Talecris Biotherapeutics, Inc. v. Marketing Total S.A., FA 1169821 (Forum May 1, 2008) (finding lack of rights or legitimate interests where domain name was used for sole purpose of generating referral fees from third-party advertisements and links, some of which competed directly with Complainant).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that combines Complainant's mark with a generic term for a category of its products, and is using it for the sole purpose of generating affiliate commissions by referring Internet users to products on Amazon.com, including products that compete directly with those offered by Complainant. Furthermore, in response to an inquiry from Complainant, Respondent acknowledged this purpose and sought payment of a sum far in excess of the out-of-pocket costs directly related to the domain name.
Respondent's conduct is indicative of bad faith registration and use under at least paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, and likely 4(b)(i) as well. See, e.g., Amazon Technologies, Inc. v. David Sutton, supra (finding bad faith based upon use of domain name to redirect users to competing products, presumably to generate referral fees, and public offer to sell the domain name for $35,000); MTD Products Inc v. Domain Administrator / Whois protection, this company does not own this domain name s.r.o., supra (finding bad faith based upon use of domain name to redirect users to competitor of complainant, and public offer to sell the domain name for $5,750); MTD Products Inc v. Domain Administrator / United Privacy Corp, supra (finding bad faith based upon public offer to sell domain name for $799 and offer made directly to complainant to sell it for $500). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <troybiltsnowblower.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 4, 2019
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