MTD Products Inc v. Chad Moston / Elite Media Group
Claim Number: FA1907001853989
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Chad Moston / Elite Media Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troybuiltpartsonline.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.
Paul M. DeCiccco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2019; the Forum received payment on July 26, 2019.
On July 26, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <troybuiltpartsonline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 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@troybuiltpartsonline.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 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCiccco 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 contends as follows:
Complainant has been a market leader in the design, manufacture, and sale of outdoor power equipment worldwide.
Complainant has rights in the TROY-BILT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <troybuiltpartsonline.com> domain name is confusingly similar to Complainant’s TROY-BILT mark as it incorporates the mark in its entirety, while misspelling the mark by adding the letter “u,” and adds the terms “parts” and “online.”
Respondent has no rights or legitimate interests in the <troybuiltpartsonline.com> domain name. Respondent is not authorized to use Complainant’s TROY-BILT mark nor commonly known by the at-issue domain name. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect users to a landing page that features pay-per-click links. Respondent further attempts to sell the disputed domain name for $2,859.00.
Respondent registered and uses the <troybuiltpartsonline.com> domain name in bad faith. Respondent attempts to sell the disputed domain name for more than out-of-pocket costs. Furthermore, Respondent has engaged in a pattern of bad faith registration as it has a history of adverse UDRP decisions. Respondent also attempts to disrupt Complainant’s business by attempting to sell the domain name and using it to redirect users to third-party competitors. Finally, Respondent attempts to trade upon Complainant’s TROY-BILT mark by creating a likelihood of confusion for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the TROY-BILT mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its TROY-BILT trademark.
Respondent’s <troybuiltpartsonline.com> domain name addresses a webpage displaying Complainant’s trademark as well as pay-per-click links some of which are to third party competitors of Complainant. Respondent offers the at-issue domain name for sale.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has a USPTO registration for its TROY-BILT trademark. Such registration is sufficient to demonstrate Complainant’s rights in the TROY-BILT mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
Respondent’s <troybuiltpartsonline.com> domain name contains Complainant’s TROY-BILT trademark, less its hyphen and with the letter “u” added, followed by the suggestive terms “parts” and “online” and all followed by the top-level domain name “.com.” The differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish the domain name from the TROY-BILT trademark for the purposes of Policy ¶ 4(a)(i). In fact, the domain name’s inclusion of the terms “parts online” suggests a possible business area for Complainant and thus only adds to any confusion between the domain name and Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <troybuiltpartsonline.com> domain name is confusingly similar to Complainant’s TROY-BILT trademark. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for <troybuiltpartsonline.com> ultimately reveals the domain name’s registrant as “Chad Moston / Elite Media Group” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <troybuiltpartsonline.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <troybuiltpartsonline.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the <troybuiltpartsonline.com> domain name to address a website that Respondent uses to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Respondent’s use the of the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (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).
Given the forgoing and absent any contrary evidence from Respondent, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and was being used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent generally offered to sell the at-issue domain name for an amount in excess of Respondent’s out-of-pocket costs. Offering the confusingly similar <troybuiltpartsonline.com> domain name for sale in this manner demonstrates Respondent’s bad faith per Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Next, Respondent has been the recipient of multiple adverse UDRP decisions thereby evidencing a pattern of bad faith registration and use of domain names. Such a pattern indicates Respondent’s bad faith in the instant case per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
As mentioned above regarding rights and legitimate interests, Respondent uses the <troybuiltpartsonline.com> domain name to address a website displaying third-party links, including competitive links. Such use demonstrates Respondent’s bad faith per Policy ¶ 4(b)(iii). 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).”).
Finally, Respondent uses the <troybuiltpartsonline.com> domain to create the false impression that Complainant is in some way associated with Respondent, when it is not. Indeed, in addition to using the confusingly similar domain name Respondent displays Complainant’s trademark on Respondent’s <troybuiltpartsonline.com> website. Respondent’s use of the <troybuiltpartsonline.com> domain name to create a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the domain name for commercial gain points to Respondent’s bad faith registration and use of the at-issue domain name under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <troybuiltpartsonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCiccco, Panelist
Dated: August 20, 2019
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