DECISION

 

MTD Products Inc v. shi rong lin / lin shi rong

Claim Number: FA2001001877539

 

PARTIES

Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, United States. Respondent is shi rong lin / lin shi rong (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mtdblog.com>, registered with DropCatch.com 452 LLC; DropCatch.com 452 LLC.

 

PANEL

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.

 

Hon. Karl v. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 3, 2020; the Forum received payment on January 3, 2020.

 

On January 3, 2020, DropCatch.com 452 LLC; DropCatch.com 452 LLC confirmed by e-mail to the Forum that the <mtdblog.com> domain name is registered with DropCatch.com 452 LLC; DropCatch.com 452 LLC and that Respondent is the current registrant of the name. DropCatch.com 452 LLC; DropCatch.com 452 LLC has verified that Respondent is bound by the DropCatch.com 452 LLC; DropCatch.com 452 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 January 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2020 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@mtdblog.com.  Also on January 7, 2020, 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 January 29, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, MTD Products Inc., is in the business of design, manufacture, and sale of outdoor power equipment. Complainant has rights in the MTD mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,986,869, registered July 16, 1996). Respondent’s <mtdblog.com> domain name is identical and/or confusingly similar to Complainant’s mark because it wholly incorporates the MTD mark and simply adding a generic term.

 

Respondent does not have rights or legitimate interests in the <mtdblog.com> domain name. Respondent is not commonly known by the name and Complainant has not granted permission for Respondent to use the MTD mark in a domain name. Further, Respondent fails to use the disputed domain name for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Instead, Respondent uses the domain to redirect users to a website containing adult-oriented material and hyperlinks unrelated to Complainant’s business.

 

Respondent registered and used the <mtdblog.com> domain name in bad faith. Respondent disrupts Complainant’s business by diverting internet traffic from Complainant’s site through use of a confusingly similar domain name. Further, Respondent uses the disputed domain name to create a likelihood of confusion with Complainant for Respondent’s own commercial gain.  Finally, Respondent had actual knowledge of Complainant’s rights in the MTD mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <mtdblog.com> domain name.

 

DISCUSSION

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant asserts rights in the MTD mark based on registration with the USPTO (e.g. Reg. No. 1,986,869, registered July 16, 1996). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel finds that that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant also argues that Respondent’s <mtdblog.com> domain name is identical and/or confusingly similar to Complainant’s mark because it wholly incorporates the MTD mark, simply adding a generic term. The disputed domain name also adds the “.com” generic top-level domain (“gTLD”). The addition of a generic term and a gTLD is insufficient to overcome confusing similarity between a disputed domain name and a mark per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). The Panel finds that the disputed domain name is confusingly similar to the MTD mark under Policy ¶ 4(a)(i).  

 

Complainant has proved this element.

 

Rights or Legitimate Interests

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”). The Panel finds Complainant has made a prima facie case.

 

Complainant argues that Respondent is not commonly known by the <mtdblog.com> domain name and Complainant has not granted permission for Respondent to use the MTD mark in a domain name. Evidence that a registrant’s name differs greatly from a disputed domain name may be used to show that the respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). 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). Also, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Shi Rong Lin / Lin Shi Rong” and no information indicates that Complainant authorized Respondent to use the MTD mark. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).

 

Complainant also contends that Respondent fails to use the <mtdblog.com> domain name for any bona fide offering of goods or services or for any legitimate noncommercial of fair use since Respondent uses the disputed domain name to display adult-oriented material and third-party hyperlinks for commercial gain. Use of a domain name to display adult-oriented material is not considered a bona fide offering of goods or services or a legitimate noncommercial of fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). See Am. Online, Inc. v. Boch, FA 209902 (Forum Dec. 22, 2003) (“Respondent uses <aol-x.com> in connection with [adult-oriented] material, which is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶¶ 4(c)(i) [and] (iii).”). Similarly, the use of a disputed domain name to display unrelated hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial of fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides a screenshot of Respondent’s webpage and contends that the site contains adult entertainment material and a series of links. The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has proved this element.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and used the <mtdblog.com> domain name in bad faith because Respondent disrupts Complainant’s business by diverting internet traffic from Complainant’s site through use of a confusingly similar domain name. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Complainant argues that although Respondent’s webpage is used to display adult-oriented material and hyperlinks unrelated to Complainant’s business, it is in competition with and acts to disrupt Complainant’s business. This is evidence that Respondent registered and uses the domain name in bad faith under under Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent registered and used the <mtdblog.com> domain name in bad faith because Respondent uses the disputed domain name to create a likelihood of confusion with Complainant for Respondent’s commercial gain. Use of a disputed domain name to display hyperlinks for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of Respondent’s webpage and the third-party hyperlinks contained on the site. This is evidence that Respondent registered and uses the domain name in bad faith under under Policy ¶ 4(b)(iv).

 

Complainant argues that Respondent had actual knowledge of Complainant’s rights in the MTD mark. While constructive notice of a complainant’s rights in a mark is insufficient to show bad faith, actual notice can be evidence of bad faith registration and use. Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant contends that having valid trademark registrations which predate Respondent’s registration of the <mtdblog.com> domain name and the fame of its mark show that Respondent had actual knowledge of Complainant’s rights in the mark. The Panel finds that Respondent had actual knowledge of Complainant’s mark and registered and uses the mark in bad faith under Policy ¶ 4(a)(iii).

 

Complainant has proved this element.

 

DECISION

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 <mtdblog.com> domain name be TRANSFERRED from Respondent to Complainant.

______________________________________________________________

 

 

 

 

Hon. Karl V. Fink (Ret.) Panelist

February 4, 2020

 

 

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