DECISION

 

MTD Products Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd

Claim Number: FA1907001853793

 

PARTIES

Complainant is MTD Products Inc. (“Complainant”), represented by Christopher A. Corpus, Ohio, USA.  Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwtroybilt.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 25, 2019; the Forum received payment on July 25, 2019.

 

On July 26, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <wwwtroybilt.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name.  PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2019 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@wwwtroybilt.com.  Also on July 29, 2019, 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 August 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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:

1.    Complainant, MTD Products Inc., under the TROY-BILT mark offers branded outdoor power equipment through a network of independent dealers, through big box retail chains, and the Internet. Complainant has rights in the TROY-BILT mark based upon the registration with the United States Patent Office (“USPTO”) (e.g., Reg. No. 850,181, registered June 4, 1968). See Amend. Compl. Ex. A. Respondent’s <wwwtroybilt.com> domain name is confusingly similar as it incorporates Complainant’s entire TROY-BILT mark, merely adding the letters “www”, and the “.com” generic top-level domain (“gTLD”).

2.    Respondent does not have rights or legitimate interests in the <wwwtroybilt.com> domain name. Respondent is not permitted or licensed to use Complainant’s TROY-BILT mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to divert Internet users to Respondent’s website where Respondent hosts pay-per-click advertisements. Furthermore, Respondent attempts to sell the disputed domain name.

3.    Respondent registered and uses the <wwwtroybilt.com> domain name in bad faith. Respondent attempts to sell the disputed domain name for $2,246.00. Respondent engages in a pattern of bad faith registration by registering domain names that incorporate variations of Complainant’s mark. Furthermore, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. , Respondent failed to respond to Complainant’s cease and desist letter. See Amend. Compl. Ex. E. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the TROY-BILT mark.

 

B.   Respondent

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <wwwtroybilt.com> domain name is confusingly similar to Complainant’s TROY-BILT mark.

2.    Respondent does not have any rights or legitimate interests in the <wwwtroybilt.com> domain name.

3.    Respondent registered or used the <wwwtroybilt.com> domain name in bad faith.

 

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 claims rights to the TROY-BILT mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). 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)). Complainant provides copies of its USPTO registrations for the TROY-BILT mark (e.g., Reg. No. 850,181, registered June 4, 1968). See Amend. Compl. Ex. A. Therefore, the Panel finds that Complainant has rights in the TROY-BILT mark per Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s <wwwtroybilt.com> domain name is confusingly similar to Complainant’s TROY-BILT mark as Respondent merely adds a modifier and a gTLD to the mark. The Panel notes that while Complainant does not argue this, the disputed domain name also removes the hyphen from Complainant’s TROY-BILT mark. Addition of letters and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Oracle International Corporation v. DOMAIN ADMINISTRATOR / Dong Chen Payments L.D.C., FA 1770757 (Forum Mar. 26, 2018) (finding the addition of the letters “www” before an incorporated mark insufficient to distinguish the domain name from the mark per Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Furthermore, removal of a hyphen in a mark is generally disregarded under a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Complainant argues Respondent merely adds the letters “www”, and a “.com” gTLD to Complainant’s TROY-BILT mark. The Panel agrees with Complainant and find that the <wwwtroybilt.com> does not contain changes that would sufficiently distinguish it from the TROY-BILT mark per Policy ¶ 4(a)(i).

 

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”).

 

Complainant argues that Respondent has no rights or legitimate interests in <wwwtroybilt.com> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the TROY-BILT mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain 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 Respondent as “Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd,” and there is no other evidence to suggest Respondent was authorized to use the TROY-BILT mark. See Amend. Compl. Ex. C. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims Respondent offers to sell the <wwwtroybilt.com> domain name for an amount in excess of out-of-pocket costs. Offering to sell a domain name in excess of out-of-pocket does not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) or (iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Here, Complainant provides printouts of Respondent’s offers to sell the disputed domain name for $2,249.00, which is allegedly an amount in excess of its out-of-pocket costs. See Amend. Compl. Ex. F. The Panel agrees with Complainant and hold that offering to sell a domain name for an amount in excess of –out-pocket-costs does not amount to any rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Further, Complainant argues that the <wwwtroybilt.com> domain name resolves to a website that is offering advertisements. Advertisements that divert traffic to third-party websites do not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) or (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides a screenshot of the disputed domain name’s resolving website which appears to contain links to various websites that also appear to be for sale. See Amend. Compl. Ex. D. The Panel agrees with Complainant and hold that click-through-links do not amount to a use which confers rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant claims Respondent registered and uses the <wwwtroybilt.com> domain name in bad faith. Specifically, Complainant claims that Respondent attempts to sell the disputed domain name for an amount in excess of out-of-pocket costs. Offering a domain for an amount in excess of out-of-pocket costs may be evidence of bad faith according to Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). As previously mentioned, Complainant provides printouts of Respondent’s offers to sell the disputed domain name for $2,249.00, which is allegedly an amount in excess of its out-of-pocket costs. See Amend. Compl. Ex. F. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(i).

 

Further, Complainant argues Respondent engages in a pattern of bad faith registration by registering multiple domain names, some of which include variations of Complainant’s mark. Registration of other domain names which include third party trademarks, may be evidence of bad faith under Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”). Here, Complainant contends that Respondent’s registration of the disputed domain name is an attempt by Respondent, whether intentional or not, to prevent Complainant from reflecting the TROY-BILT mark in such domain names. See Amend. Compl. Ex. D. Thus, the Panel finds Respondent engages in a pattern of bad faith registration per Policy ¶ 4(b)(ii). 

 

Complainant argues that Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements that redirect users to third-party websites. Complainant further argues that some of these third-party websites are direct competitors of Complainant. Using a confusingly similar domain name to commercially benefit via competing, pay-per-click links can evince bad faith registration and use per Policy ¶ 4(b)(iii) and/or (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Here, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and divert Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent hosts links to third party websites that generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iii) and (iv).

 

Finally, Complainant contends that in light of Complainant’s USPTO registrations and prior decisions finding for Complainant's rights in the TROY-BILT mark, Respondent registered the <wwwtroybilt.com> domain name with actual and constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See 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.”). The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wwwtroybilt.com> domain name be TRANSFERRED from Respondent to Complaint.

 

 

John J. Upchurch, Panelist

Dated:  August 30, 2019