MTD Products Inc v. Zhi Chao Yang
Claim Number: FA2006001902327
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, of Ohio, USA. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troybilty.com>, registered with Cloud Yuqu 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2020; the Complaint was submitted in both Chinese and English; the Forum received payment on June 30, 2020.
On June 30, 2020, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <troybilty.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 July 6, 2020, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of July 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@troybilty.com. Also on July 6, 2020, the Chinese language 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 July 30, 2020, 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.
The registrar for the disputed domain name has informed the Forum that that the registration agreement for the domain name is written in Chinese, thereby making that the language of the proceedings. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint submitted by Complainant and the Commencement Notification which was transmitted to Respondent in Chinese. Respondent has not acknowledged any of these pleadings or notices and has not filed a response or made any other submission in this case. Further, the website that resolves from the disputed domain name appears entirely in English. Finally, Complainant conducts its business in the English language. In view of these circumstances, the Panel determines that it is not prejudicial to the Parties for the remainder of these proceedings to be conducted in English.
A. Complainant
Complainant designs, manufactures, and distributes outdoor power equipment worldwide. Complainant has rights in the trademark TROY-BILT through its use in commerce since 1967 and its registration with the United States Patent and Trademark Office (“USPTO”) dated June 4, 1968 and others. Respondent’s <troybilty.com> domain name, registered on May 15, 2020, is confusingly similar to Complainant’s mark as it incorporates the mark in its entirely only eliminating a hyphen, adding the letter “y”, and ending with the “.com” gTLD.
Respondent has no rights or legitimate interests in the <troybilty.com> domain name. Respondent is not commonly known by this domain name, and Complainant has not authorized or licensed Respondent to use its mark in the disputed domain name. Respondent does not use the mark for any bona fide offering of goods or services, nor does it engage in any legitimate noncommercial or fair use with the mark. Instead, Respondent profits from pay-per-click fees by using the domain name to redirect to a website with hyperlinks to the sites of Complainant’s competitors as well as to sites that are unrelated to Complainant.
Respondent registered and uses the <troybilty.com> domain name in bad faith. Respondent disrupts Complainant’s business and seeks commercial gain by confusing internet users into visiting the disputed domain name instead of Complainant’s website. Respondent uses this confusion to profit from pay-per-click fees gained through the hyperlinks appearing on the its <troybilty.com> website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) The disputed 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 disputed domain name; and
(3) The disputed 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 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”).
Complainant has rights in the TROY-BILT mark through its multiple registrations with the USPTO. It is an established consensus amongst UDRP Panels that Registration with the USPTO demonstrates rights in an asserted trademark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has established rights to the TROY-BILT mark under ¶ Policy 4(a)(i).
Next, Complainant argues that Respondent’s <troybilty.com> domain name is confusingly similar to Complainant’s TROY-BILT mark as it merely omits punctuation and adds a single letter. The disputed domain name also adds the ".com" gTLD. Domain names that differ from a mark only slightly, such as by the addition of a letter, may be confusingly similar to that mark. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”) Omission of a minor punctuation mark and the addition of a gTLD similarly does not differentiate a domain name from the mark it incorporates. See, e.g., McMaster-Carr Supply Company v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1898296 (Forum July 3, 2020) (“the removal of hyphens and the addition of a gTLD are irrelevant in determining confusing similarity under Policy ¶ 4(a)(i).”); Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”) Respondent’s domain name incorporates Complainant’s mark in its entirety, and merely omits a hyphen, adds the letter “y”, and appends the “.com” gTLD to the end of the mark. It is worth noting that the letter “y” appears immediately proximate to the last letter “t” in Complainant’s mark on a standard QWERTY keyboard and so it is not unreasonable to believe that users may inadvertently type this extra letter when searching for Complainant’s products. In any event, these minor changes do not dispel the fact that Complainant’s mark is immediately noticeable in the disputed domain name. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under 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). Should it succeed in this effort, 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 asserts that Respondent has no rights or legitimate interests in the <troybilty.com> domain name, since Respondent is not commonly known by this domain name, and Complainant has not authorized or licensed Respondent to use its TROY-BILT mark. Evidence demonstrating a respondent’s name is different from the domain name can demonstrate that Respondent is not commonly known by that name. See Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum Aug. 31, 2018) (“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.”) Further, a respondent may not be commonly known by a domain name where a complainant has not authorized or licensed the use of its mark to the respondent. See Navistar International Corporation v. N Rahmany, FA 1620789 (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 Panel notes that the Registrar of the disputed domain name has identified Respondent as “Zhi Chao Yang.” Complainant claims it has not licensed or authorized Respondent to use its mark, and no information in the record indicates otherwise. As such, the Panel no evidence upon which to conclude that Respondent is commonly known by the <troybilty.com> domain name.
Next, Complainant argues that Respondent is not using the <troybilty.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, it asserts that Respondent generates pay-per-click fees by using the domain to redirect internet users to a website with hyperlinks to websites which compete with or are unrelated to Complainant. Redirecting a disputed domain name to a resolving website with competing or unrelated hyperlinks for commercial gain is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). See also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Complainant provides a screenshot of the disputed domain name’s resolving website, which contains links which Complainant contends are competing or unrelated to its business, including a link titled “Troybilt”. Complainant argues it is likely that Respondent receives pay-per-click fees for every internet user who mistakenly visits this third party site from the disputed domain and then clicks on one of the embedded links. The Respondent has not contested this and the Panel is bound to make findings based upon a reasonable level of evidence before it. As such, the Panel finds that Complainant has met its burden of proving, by a preponderance of the evidence, that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Inherently prerequisite to a finding of bad faith under Policy ¶ 4(a)(iii) is some attribution of knowledge of a complainant’s trademark, whether actual or based upon a conclusion that a respondent should have known of the mark. See, Domain Name Arbitration, 4.02-C (Gerald M. Levine, Legal Corner Press, 2nd ed. 2019) (“Knowledge and Targeting Are Prerequisites to Finding Bad Faith Registration”); USA Video Interactive Corporation v. B.G. Enterprises, D2000-1052 (WIPO Dec. 13, 2000) (claim denied where “Respondent registered and used the domain name without knowledge of Complainant for a bona fide commercial purpose.”). See also, WIPO Overview 3.0, par. 3.1.1 (when examining whether “circumstances indicate that the respondent’s intent in registering the disputed domain name was in fact to profit in some fashion from or otherwise exploit the complainant’s trademark”, Panels may consider such issues as “the respondent’s likely knowledge of the complainant’s rights”). Complainant states that “[s]ince Complainant has a valid TROY-BILT® trademark registration with the USPTO which predates the date when Respondent registered the Disputed Domain Name, prior UDRP panels have held that Respondent registered the Disputed Domain Name with actual knowledge of Complainant’s rights in the mark.” This invokes an argument based in the theory of constructive knowledge. However, this theory is widely disfavored in UDRP decisions, especially as here, where the respondent is not resident in a jurisdiction whose law applies this principle. See UBS AG v. Randy Allotey, FA 1812533 (Forum Nov. 17, 2018) ("Arguments of bad faith based on constructive notice do not usually succeed, as UDRP decisions generally decline to find bad faith as a result of constructive knowledge.") Complainant also claims that it has “invested significant sums of money to maintain the TROY-BILT® mark in the outdoor power equipment industry” thus implying that the mark has gained some notoriety. In support thereof it has provided screenshots of its own www.troybilt.com website. While Complainant’s trademark registration and its website, without more, do not provide much insight into the scope and reputation of Complainant’s mark, Respondent has not contested Complainant’s assertions. Further, Complainant’s mark uses an unconventional spelling of the word “built”. On the basis of the available evidence, the Panel finds it more likely than not that Respondent had actual knowledge of, and copied Complainant’s mark at the time it registered the disputed domain name.
Complainant next argues that Respondent’s registration and use of the <troybilty.com> is in bad faith because it disrupts Complainant’s business for the purpose of Respondent’s commercial gain. Using a disputed domain name confusingly similar to a complainant’s mark likely confuses internet users into believing they are visiting that complainant’s website or at least a site that is affiliated with the complainant. Using this likelihood of confusion to generate pay-per-click revenue by hosting links to competitor sites on the resolving website may be considered disruption for commercial gain. See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and (iv) where Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”) The Complainant has submitted into evidence a screenshot of the disputed domain name’s resolving website, which lists multiple links to competitors or unrelated sites. One of the links is entitled “Trobybilt”. Complainant asserts that this site generates pay-per-click fees for Respondent or others. The Respondent has filed no response or made any other submission in this case and so does not dispute these assertions. Based upon a preponderance of the available evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under both Policy ¶¶ 4(b)(iii) and (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 <troybilty.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 31, 2020
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