Deere & Company v. Troy Smart / Smart Enterprises
Claim Number: FA1709001747755
Complainant is Deere & Company (“Complainant”), represented by Philip Matthews of One John Deere Place, Illinois, USA. Respondent is Troy Smart / Smart Enterprises (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <johndeeretexas.com>, <johndeeretexas.net>, <johndeerecompacts.com>, <johndeeremotorgraders.com>, <johndeereworksite.com>, <johndeeredozer.com>, <johndeeredozer.net>, <johndeeretyler.com>, <johndeeretyler.net>, <johndeereskidsteers.com>, <johndeereflint.com>, <johndeereflint.net>, <texasjohndeereattachments.com>, <johndeerescrapers.com>, <johndeereloaders.com>, <johndeerecrawlers.com>, <excavatorjohndeere.com>, <flintjohndeere.com>, <johndeerebuckets.com>, <backhoesjohndeere.com>, <chappellhilljohndeere.com>, <johndeereexcavator.com>, <texasjohndeere.com>, <jddozer.com>, and <jddozer.net>, registered with GoDaddy.com, LLC.
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 September 6, 2017; the Forum received payment on September 6, 2017.
On Sep 07, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <johndeeretexas.com>, <johndeeretexas.net>, <johndeerecompacts.com>, <johndeeremotorgraders.com>, <johndeereworksite.com>, <johndeeredozer.com>, <johndeeredozer.net>, <johndeeretyler.com>, <johndeeretyler.net>, <johndeereskidsteers.com>, <johndeereflint.com>, <johndeereflint.net>, <texasjohndeereattachments.com>, <johndeerescrapers.com>, <johndeereloaders.com>, <johndeerecrawlers.com>, <excavatorjohndeere.com>, <flintjohndeere.com>, <johndeerebuckets.com>, <backhoesjohndeere.com>, <chappellhilljohndeere.com>, <johndeereexcavator.com>, <texasjohndeere.com>, <jddozer.com>, and <jddozer.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 2, 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@johndeeretexas.com, postmaster@johndeeretexas.net, postmaster@johndeerecompacts.com, postmaster@johndeeremotorgraders.com, postmaster@johndeereworksite.com, postmaster@johndeeredozer.com, postmaster@johndeeredozer.net, postmaster@johndeeretyler.com, postmaster@johndeeretyler.net, postmaster@johndeereskidsteers.com, postmaster@johndeereflint.com, postmaster@johndeereflint.net, postmaster@texasjohndeereattachments.com, postmaster@johndeerescrapers.com, postmaster@johndeereloaders.com, postmaster@johndeerecrawlers.com, postmaster@excavatorjohndeere.com, postmaster@flintjohndeere.com, postmaster@johndeerebuckets.com, postmaster@backhoesjohndeere.com, postmaster@chappellhilljohndeere.com, postmaster@johndeereexcavator.com, postmaster@texasjohndeere.com, postmaster@jddozer.com, and postmaster@jddozer.net. Also on September 11, 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.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did send some e-mails to the Forum, see below.
On November 20, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the world’s largest manufacturer of agricultural equipment and a leading supplier of equipment for construction, forestry, and turf care, including lawn mowers for the professional and residential markets. It manufactures in more than 20 countries worldwide and has more than 55,000 employees with revenues exceeding $26 billion in 2016. Complainant uses its JOHN DEERE and JD marks in conjunction with its goods and services. Complainant registered the JOHN DEERE and JD marks in the United States in, respectively, 1913 and 1973. The marks are registered elsewhere around the world and they are famous.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s marks because they incorporate the entire JD and JOHN DEERE marks while merely adding generic, descriptive, or geographic terms. Further, the addition of the generic top-level domain (gTLD) “.com” to the disputed domain names do not serve to distinguish them from Complainant’s marks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. There is no evidence in the WHOIS information to suggest that Respondent is known by the disputed domain names. Additionally, Respondent has never received any permission or license from Complainant to use the JOHN DEERE or JD marks. Respondent fails to use the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, as the domain names redirect internet users to a competing commercial website, while also advertising an outdoor RV kitchen having no affiliation to Complainant.
Further, says Complainant, Respondent registered and continues to use the disputed domain names in bad faith. Respondent is using the domain names to intentionally attempt to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website. Respondent does so to advertise and sell unrelated RV kitchen products. Further, past Panels have routinely found “opportunistic bad faith” where a Complainant’s famous mark is registered as a domain name by a party with no connection to the Complainant. Lastly, due to the fame of the JD and JOHN DEERE marks, Respondent registered the disputed domain names with constructive and/or actual knowledge of Complainant’s rights to its marks.
B. Respondent
Respondent failed to submit a Response in this proceeding. He did however send some E-Mails to the Forum. The last one reads, in pertinent part: “I have not had a business in over 4 years … I will gladly hand these to you they were supposed to had been all taken off years ago I had no idea they were still any good I thought they had expired.”
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.
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."
In the present case, the parties have both asked for the domain name to be transferred to 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 <johndeeretexas.com>, <johndeeretexas.net>, <johndeerecompacts.com>, <johndeeremotorgraders.com>, <johndeereworksite.com>, <johndeeredozer.com>, <johndeeredozer.net>, <johndeeretyler.com>, <johndeeretyler.net>, <johndeereskidsteers.com>, <johndeereflint.com>, <johndeereflint.net>, <texasjohndeereattachments.com>, <johndeerescrapers.com>, <johndeereloaders.com>, <johndeerecrawlers.com>, <excavatorjohndeere.com>, <flintjohndeere.com>, <johndeerebuckets.com>, <backhoesjohndeere.com>, <chappellhilljohndeere.com>, <johndeereexcavator.com>, <texasjohndeere.com>, <jddozer.com>, <jddozer.net> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 20, 2017
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