The Toro Company v. AJ Burton / Equipment Garage
Claim Number: FA1806001791077
Complainant is The Toro Company (“Complainant”), represented by Linda M. Byrne Linda M. Byrne of The Toro Company, Minnesota, USA. Respondent is AJ Burton / Equipment Garage (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2018; the Forum received payment on June 12, 2018.
On June 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> 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 June 15, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2018 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@bosspartstore.com, postmaster@bossoem.com, postmaster@bosspartsdistributor.com, postmaster@bosspartsdistributors.com, postmaster@buybossparts.com. Also on June 15, 2018, 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 July 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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 is one of the world’s leading manufacturers of snowplows, salt spreaders, and other equipment. Complainant has rights in the BOSS (e.g. Reg. No. 4,863,338, registered Dec. 1, 2015) and THE BOSS (e.g. Reg. No. 2,576,088, registered June 4, 2002) marks through its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names are confusingly similar to Complainant’s mark as they all contain Complainant’s mark and append/prepend various generic terms.
Respondent has no rights or legitimate interests in the <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names. Respondent is not commonly known by the disputed domain named, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain named in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to resolve to a GoDaddy parked webpage featuring competing hyperlinks such as “Boss plow parts” and “Plow V.”
Respondent registered and uses the <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names in bad faith. Respondent disrupts Complainant’s business by intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website where it offers competing hyperlinks. Further, given Respondent’s use of the domain names incorporating Complainant’s mark, along with the fame of the marks, Respondent clearly had knowledge of Complainant’s marks prior registering the infringing domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is The Toro Company, of Bloomington, Minnesota, USA. Complainant is the owner of domestic registrations for the mark BOSS and variations thereof in word and design, which it has used continuously, since at least as early as 1985, in connection with its production and sale of snowplows, vehicle attachments, spreaders, and related goods. Complainant operates both in real space, and in cyberspace at <bossplow.com>.
Respondent is AJ Burton / Equipment Garage, of Cedarburg, Wisconsin, USA. Respondent’s registrar’s address is Scottsdale, Arizona, USA. The Panel notes that Respondent registered the domain names on or about the following dates: <bosspartstore.com> (July 2, 2012), <bossoem.com> (July 25, 2013), <bosspartsdistributor.com> (July 19, 2013), <bosspartsdistributors.com> (July 19, 2013), and <buybossparts.com> (July 19, 2013).
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 Mgmt., 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.”).
Complainant claims rights in the BOSS (e.g. Reg. No. 4,863,338, registered Dec. 1, 2015) and THE BOSS (e.g. Reg. No. 2,576,088, registered June 4, 2002) marks through its registration of the mark with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the BOSS and THE BOSS marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <bosspartstore.com>, bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names are identical or confusingly similar to Complainant’s marks as they all contain Complainant’s mark and append/prepend various generic terms. The Panel also notes that the domain names eliminate the term “the” in THE BOSS mark and add the “.com” generic top-level domain (“gTLD”). Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). The Panel here finds that the disputed domain names are confusingly similar to the BOSS and THE BOSS marks under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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 Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant here has set forth the requisite prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “AJ Burton / Equipment Garage” as the registrant for all of the domain names. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the BOSS or THE BOSS marks. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to its registration, and Complainant has not given Respondent permission to use the marks in any manner. As Respondent has failed to contest any of Complainant’s assertions, the Panel finds that Respondent is not commonly known by the infringing domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the disputed domain name to resolve to a website that contains a series of hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving webpages, which appear to resolve to GoDaddy parked webpages featuring hyperlinks such as “Boss plow parts” and “Plow V.” The Panel here finds that Respondent uses the domain names to advertise competing hyperlinks, thus failing to use the domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names in bad faith by disrupting Complainant’s business and creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering links to competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides screenshots of the resolving webpages, which appear to resolve to GoDaddy parked webpages featuring hyperlinks such as “Boss plow parts” and “Plow V.” The Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark through bad faith registration and use of the disputed domain names under Policy ¶¶ 4(b)(iii) & (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bosspartstore.com>, <bossoem.com>, <bosspartsdistributor.com>, <bosspartsdistributors.com>, and <buybossparts.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 19, 2018
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