Briggs & Stratton Corporation v. ReachLocal Hostmaster
Claim Number: FA1708001744019
Complainant is Briggs & Stratton Corporation (“Complainant”), represented by James L. Vana of Perkins Coie LLP, Washington, USA. Respondent is ReachLocal Hostmaster (“Respondent”), represented by Didier Diels, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ferrismowers.co>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2017; the Forum received payment on August 10, 2017.
On Aug 14, 2017, Name.com, Inc. confirmed by e-mail to the Forum that the <ferrismowers.co> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2017 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@ferrismowers.co. Also on August 17, 2017, 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.
Respondent did not submit a response, but on August 25, 2017 it sent an e-mail to the Forum, see below. Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a leading manufacturer of small engines, with particular expertise in the field of gas engines for lawn mowers, snow blowers, and the like. In connection with this business, Complainant uses the FERRIS mark to provide and market lawn and yard maintenance machinery such as lawnmowers. Complainant has rights in the FERRIS mark due to it registration in the United States in 2003. Complainant owns and operates the website at <ferrismowers.com>.
According to Complainant, the disputed domain name is confusingly similar to its mark, as it contains the mark in its entirety, merely adding the generic or descriptive word “mowers” and the country code top-level domain (“ccTLD”) “.co.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor is it a licensee or authorized user of the FERRIS mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to pages mimicking Complainant’s website <ferrismowers.com>, incorporating all details of Complainant’s website, including copyright attribution and terms and conditions.
Further, says Complainant, Respondent has registered and used the disputed domain name in bad faith. Respondent capitalizes on the one-letter difference in the gTLDs of the disputed domain name and Complainant’s legitimate <ferrismowers.com> to mislead Internet users and expose them to potential fraudulent activity. Additionally, Respondent’s wholesale copying of Complainant’s website at the resolving website of the disputed domain name indicates that Respondent registered and used the disputed domain name with actual knowledge of Complainant and its rights in the FERRIS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, it sent an E-Mail to the Forum, stating in pertinent part:
We actually acquired this domain on behalf of Briggs & Stratton. We were engaged to run digital advertisements for ferrismowers.com, and as part of our service we sometimes set up a proxy version of the underlying website in order to track the results of our advertisement campaigns, as the client specifically authorizes under our terms and conditions. For now we have shut down our use of the domain and are happy to transfer ownership of the domain to our shared client.
For the reasons set forth below, the Panel will not make any findings of fact.
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 the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <ferrismowers.co> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: September 11, 2017
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