MTD Products Inc v. This Domain May Be For Sale At Https://Www.Networksolutions.Com / New Ventures Services, Corp
Claim Number: FA1907001854016
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is This Domain May Be For Sale At Https://Www.Networksolutions.Com / New Ventures Services, Corp (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <troybiltlawnmower.com>, registered with Network Solutions, 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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2019; the Forum received payment on July 26, 2019.
On July 26, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <troybiltlawnmower.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@troybiltlawnmower.com. Also on July 26, 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 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 has been a market leader in the design, manufacture, and sale of outdoor power equipment worldwide. Complainant has rights in the trademark TROY-BILT through its use in commerce since 1967 and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) dating back to 1968. Respondent’s <troybiltlawnmower.com> domain name, registered on April 20, 2017, is confusingly similar to Complainant’s TROY-BILT mark as it incorporates the mark in its entirety, along with the generic term “lawnmower.”
Respondent has no rights or legitimate interests in the <troybiltlawnmower.com> domain name. Respondent is not licensed or authorized to use Complainant’s TROY-BILT mark nor is it commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to feature a series of competing, pay-per-click links. Furthermore, Respondent offers to sell the disputed domain name for $777.00.
Respondent registered and uses the <troybiltlawnmower.com> domain name in bad faith. Respondent attempts to sell the disputed domain name for $777.00. Furthermore, Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users to the disputed domain name’s website that features competing, pay-per-click links.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent 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."
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”).
Complainant claims rights in the TROY-BILT mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. 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). The Panel therefore holds that Complainant’s registration of the TROY-BILT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <troybiltlawnmower.com> domain name is confusingly similar to the TROY-BILT mark, as the name incorporates the mark in its entirety, along with the generic term “lawnmower.” While Complainant does not argue this, the disputed domain name also appears to remove a hyphen from the mark and adds a “.com” generic top-level domain (“gTLD”). Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also 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"). The Panel therefore determines that the <troybiltlawnmower.com> domain name is confusingly similar to the TROY-BILT mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 the <troybiltlawnmower.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TROY-BILT mark in any way. In considering this question, and especially where a response is lacking, WHOIS information may support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the <troybiltlawnmower.com> domain name as “This Domain May Be For Sale At Https://Www.Networksolutions.Com / New Ventures Services, Corp,” and no information on the record indicates Respondent’s true name or that it was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds that Respondent has not been commonly known by the <troybiltlawnmower.com> domain name under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent’s lack of rights or legitimate interests in the <troybiltlawnmower.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to obtain click-through revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (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). Complainant contends the domain name resolves to a website displaying only pay-per-click links (e.g., “Exmark Mowers” and “Commercial Lawn Mowers”), some of which send users to the websites of Complainant’s competitors. Complainant provides a screenshot of the disputed domain name’s resolving website which features what appear to be pay-per-click links[i]. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <troybiltlawnmower.com> domain name by virtue of its use of the name to resolve to a website with monetized links to third-party commercial sites.
Finally, Complainant asserts that Respondent’s attempts to offer the <troybiltlawnmower.com> domain name for sale further indicate that it does not have rights or legitimate interests in the name. A respondent’s offer to sell a domain name to the general public can indicate that the respondent lacks rights and legitimate interests in the name per Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides screenshots indicating the at-issue domain name resolves to a website which purports to offer the domain name for sale at a price of $777.00. The Panel therefore finds that this activity does not support the conclusion that Respondent has any rights or legitimate interests in the <troybiltlawnmower.com> domain name per Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s TROY-BILT mark at the time it registered the <troybiltlawnmower.com> domain name. However, the Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent typically declines to find bad faith as a result of constructive knowledge. 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.”) However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in its mark prior to registering the disputed domain name and finds that actual knowledge does adequately create a foundation upon which to support a finding of bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant submits advertisements and other evidence to show that its mark is well-known. It further contends that, given Respondent’s use of the <troybiltlawnmower.com> domain name to offer pay-per-click links featuring the precise category of Complainant’s business, Respondent had knowledge of Complainant’s rights in the rather distinctive TROY-BILT mark when it registered the disputed domain name. In the absence of a Response or other submission by the Respondent in this case, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark at that time.
Next, Complainant contends that Respondent’s bad faith is indicated by its use of the <troybiltlawnmower.com> domain name to link to third party websites, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including competitive links, can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (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 Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”) The evidence of record indicates that the domain name resolves to a webpage displaying links to third party websites, some of which belong to competitors of Complainant. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant contends that Respondent’s only purpose in registering the <troybiltlawnmower.com> domain name was to gain commercially from the sale of the same, indicating its registration and use of the name in bad faith. A general offer to sell a domain name can be evidence that the respondent intended to make such an offer at the time it registered the name, supporting a finding of 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"). Complainant contends that, given the high value of its unique and longstanding TROY-BILT mark and Respondent’s offer for sale of the <troybiltlawnmower.com> domain name on a domain name auction site at a price of $777.00, provides evidence that Respondent’s true purpose for registering and using the domain name was and is to sell the name for a profit. The Panel agrees and finds Respondent to have registered and used the <troybiltlawnmower.com> domain name in bad faith per Policy ¶ 4(b)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <troybiltlawnmower.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 19, 2019
[i] Complainant provides a screenshot of the home page associated with the disputed domain name to support this contention but this only shows a number of category headings, not actual links to third-party websites. However, the Panel’s independent review of the <troybiltlawnmower.com> website confirms that there do exist pay-per-click links which lead to various third-party websites that offer goods in the lawn care industry.
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