MTD Products Inc v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1909001861312
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 <cubcadetpartsdirect.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2019; the Forum received payment on September 9, 2019.
On September 10, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cubcadetpartsdirect.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com; 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 September 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 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@cubcadetpartsdirect.com. Also on September 16, 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 October 9, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its rights in the CUB CADET trademark acquired through its portfolio of trademark registrations described below and its rights in the mark acquired through use in commerce since 1981when it acquired the Cub Cadet brand including the rights to the trademark CUB CADET. Complainant asserts that it has since invested significant sums of money to maintain the CUB CADET brand in the outdoor power equipment industry including the cost of securing and maintaining its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CUB CADET mark claiming first use back to 1960. Additionally, Complainant has an Internet presence maintaining a website to which the disputed domain name resolves.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s CUB CADET trademark arguing that Complainant’s trademark is displayed in its entirety in the disputed domain name, the remainder of which is simply generic words which are part of the goods in which Complainant has trademark rights – component parts. Prior UDRP decisions have held that a valid trademark registration with the USPTO establishes a Complainant’s rights in the mark pursuant to Policy Paragraph 4(a)(i). See Centura Health Corp. v. Jasper Developments, Claim No. FA0607000751616 (Forum Aug. 24, 2006).
Numerous UDRP panels have held that the fact that a domain name wholly incorporates a complainant’s registered trademark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such trademark. Nikon, Inc. and Nikon Corp. v. Technilab, Inc., WIPO Case No. D2000-1774 and Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, citing EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096.
Further, numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive elements does not make a domain name any less “identical or confusingly similar” for purposes of satisfying the first prong. Shaw Industries Group, Inc. and Columbia Ins. Co. v. Royce Southerland, WIPO Case No. D2011-1644, citing Microsoft Corp. v. Step-Web, WIPO Case No. D2000-1500.
Complainant submits that Respondent has no rights or legitimate interest in the disputed domain name <cubcadetpartsdirect.com>.
Complainant submits that the burden is on Complainant to first make out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name. CDG v. WSM Domains – Privacy Registrations, FA Case No. FA. 9333942 (May 2, 2007). Complainant’s threshold for making such showing is low. Id. This is because proving a negative can be difficult. Charles Chips Enterprises, Inc. v. Mark Patterson d/b/a Innate 2 Create and Ted Henderson, WIPO Case No. D2005-0836. Such evidence typically lies within Respondent’s knowledge. Id. Once Complainant makes out its prima facie case, the burden then shifts to respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (Aug. 21, 2003).
Complainant submits that Complainant and Respondent have no corporate affiliations; that Respondent is not an authorized independent dealer of CUB CADET branded outdoor power equipment.; that Respondent is not licensed or authorized to use Complainant’s CUB CADET mark in its domain name or otherwise; and that Respondent is not commonly known by the disputed domain name according to the WHOIS which lists the Respondent as “Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd.”
Complainant alleges that Respondent is using the disputed domain name to take advantage of Complainant’s mark by diverting Internet users to a competing commercial site which cannot be considered to be a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name. See Centura Health Corp. v. Jasper Developments, Claim No. FA0607000751616 (Forum Aug. 24, 2006).
Complainant alleges furthermore that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and argues that the registration of the disputed domain name with knowledge that it contains or is confusingly similar to Complainant’s trademark is a factor evidencing lack of a bona fide use. Savin Corp. v. Ronald Mowbray, FA-103869 (March 1, 2002). In McNeil Consumer Brands, Inc. v. Meriweb Solutions, D2000-0612 (WIPO Aug. 3, 2000), the panel held that registrant’s knowing use of a domain name similar to the complainant’s trademark evidences bad faith rather than a bona fide use.
Further, Complainant asserts that neither can the use of the disputed domain name which is identical or confusingly similar to Complainant’s mark to divert potential customers from Complainant to Respondent be considered a bona fide offering of goods.
Complainant asserts that Respondent is not using the disputed domain name in a non-commercial setting and is offering to sell the disputed domain name for a premium, presumably, for a profit, and furthermore the operation of a landing page containing a series of links that are presumably pay-per-click. Prior decisions have held that such use is not a bona fide offering of goods or services or a legitimate non-commercial or fair use pursuant to Policy 4(c)(i) or 4(c)(iii). See, The Gap, Inc. v. Jasper Developments, Claim No. FA1006001332380; Cabela’s, Inc. v. Jasper Developments Pty Ltd., Claim No. FA0908001278819.
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant holds valid registrations for the CUB CADET trademark with the USPTO for rights which predates the registration of the disputed domain name. Complainant argues that prior panels have held that the registration of a domain name that is confusingly similar to a complainant’s mark, with actual or constructive knowledge of the complainant’s rights in the mark evidences bad faith registration and use of the domain name in issue pursuant to Policy 4(a)(iii). See Centura Health Corp. v. Jasper Developments, Claim No. FA0607000751616 (Forum Aug. 24, 2006). Complainant submits that therefore Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
Complainant submits that Respondent is offering to sell the disputed domain name for $2,015.00. Complainant argues that therefore Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant further submits that Respondent is attempting to sell the disputed domain name for an amount in excess of Respondent’s out-of-pocket costs which demonstrates Respondent’s bad faith under Policy 4(b)(i).
Complainant further argues that Respondent has registered the disputed domain name in order to prevent Complainant, as owner of the CUB CADET trademark from reflecting the mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct Complainant submits that Respondent has engaged in a pattern of such conduct as evidenced by the following list of cases under the Policy:: • Transamerica Corporation v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1730186 (June 2, 2017), • Garmin Switzerland GmbH v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1747199 (Oct. 4, 2017), • PGA Service Corp. v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd., FA1760980 (Jan. 3, 2018), • TD Ameritrade IP Company, Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd., FA1781032 (May 14, 2018), • Navajo Nation Gaming Enterprise v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd., FA1781612 (April 18, 2018), • Caterpillar Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1782231 (April 20, 2018), • Decjuba Pty Ltd v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1801453 (Sept. 17, 2018), • Land Rover Ltd. V. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1808920 (Sept. 27, 2018), 11 • Securian Financial Group, Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1812404 (Nov. 20, 2018), • Indeed, Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1814504 (Nov. 24, 2018), • American Council of Education and GED Testing Service LLC v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1821239 (Jan. 11, 2019), • Barclays PLC v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1835579 (May 2, 2019), • COMPLAINANT Products Inc v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1853793 (August 30, 2019), and • COMPLAINANT Products Inc v. Domain Admin / Domain Privacy Guard Sociedad Anonima Ltd, FA1854040 (Sept. 7, 2019).
Complainant argues that therefore Respondent’s primary purposes for registering the disputed domain name are the attempted re-sale of the disputed domain name for a premium to a third-party in order to compete with Complainant and the operation of a pay-per-click landing page.
Finally Complainant submits that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.] Bad faith has been found when a domain name was registered for the specific purpose of trading off the name and reputation of a trademark owner. Caterpillar, Inc. v. Stephen R. Vine, Forum, Case No. FA0104000097097.
B. Respondent
Respondent failed to submit a Response in this proceeding.
· United States Registered Trademark CUB CADET registration no. 1,252,738, registered on October 4 1983 for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 2,066,180, registered on June 3, 1997 for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 2,068,347, registered on June 10, 1997 for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 2,064,410 registered on May 27, 1997 for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 2,062,521, registered on February 25, 1997 for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 2,062,523, registered on May 20, 1997, for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 3,323,679, registered on October 30, 2007 for goods in international class 7;
· United States Registered Trademark CUB CADET registration no. 2,064,409, registered on May 27,1997, for goods in international class 7.
The disputed domain name <cubcadetpartsdirect.com> was registered on March 2, 2011 and resolves to a website which appears to contain links to content that refer specifically to Complainant’s products including “Cub Cadet Mower Parts”, “Used Cub Cadet Parts” and “Cub Cadet Replacement Parts” but also “Snow Thrower Parts”, “Lawn Tractor Parts” “Lawn Mower Parts”. There is also a statement in the header of website to which the disputed domain name resolves as follows: The domain cubcadetpartsdirect.com maybe (sic) for sale. Click here for more information.”
There is no information available about Respondent except for that provided in the Complaint and in the Registrar’s Whois.
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”).
On the evidence this Panel finds that Complainant has rights in the CUB CADET trademark through its abovementioned US Registered Trademarks and the goodwill accrued by Complainant in the mark at common law by extensive use of the mark in commerce.
This Panel also finds that the disputed domain name is confusingly similar to Complainant’s mark. The disputed domain name consists of Complainant’s trademark as the dominant and distinctive element along with the descriptive elements “parts” and “direct” and the gTLD <.com> extension. The descriptive words “parts” and direct“ do not contain any distinguishing elements and in the circumstances of this Complaint the gTLD extension may be ignored for the purposes of determining confusing similarity.
Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)
It is well established and accepted by Panels under the Policy that the burden is on Complainant to first make out a prima facie case showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Complainant has made out such a prima facie case. The disputed domain name is confusingly similar to Complainant’s mark; on the balance of probabilities the disputed domain name was registered with Complainant’s mark in mind; the disputed domain name resolves to a website that appears to contain pay per click links; the use of the disputed domain name, having Complainants mark as its dominant and only distinctive element creates the false impression that Respondent and its website are in some way associated with Complainant; there is no evidence that Respondent is using the disputed domain name to sell bona fide goods of Complainant; Complainant has no commercial association with Respondent and has not given Respondent any permission to use the CUB CADET trademark in the disputed domain name or otherwise.
Respondent has failed to submit a response or to deny Complainant’s allegations. Respondent has therefore failed to discharge the burden of production required to establish that it has rights or legitimate interests in the disputed domain name.
This Panel finds therefore that Respondent has no rights or legitimate interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy Paragraph 4(a)(ii).
On the balance of probabilities the registrant of the disputed domain name was actually aware of Complainant, its business, reputation and trademarks when the disputed domain name was registered. It is highly improbable that the words “CUB” and “CADET” together with the descriptive elements were chosen coincidentally in combination to create the disputed domain name. On the balance of probabilities therefore the disputed domain name was created, chosen and registered with Complainant’s rights in mind in order to take predatory advantage of Complainant’s goodwill in the CUB CADET mark.
There is no evidence that Respondent is a bona fide reseller of Complainant’s goods. Complainant has asserted that it has no commercial association with Respondent. Neither is there evidence that Respondent is using the site only to sell the trademarked goods. Furthermore while Respondent is using Complainant’s trademark to attract traffic to the website to which the disputed domain name resolves, the website does not disclose that Respondent has no commercial relationship with Complainant.
In the circumstances, this Panel finds that on the balance of probabilities by using the disputed domain name as the address of a website, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
In addition the fact that Respondent appears to have engaged in a pattern of registering well known trademarks as domain names and is offering the disputed domain name for sale for a sum in in excess of Respondent’s documented out-of-pocket costs directly related to the domain name would also, in the circumstances, indicate that on the balance of probabilities Respondent has registered and is using the disputed domain name in bad faith to take unauthorized advantage of Complainant and its goodwill.
Complainant has therefore succeeded in the third and final element of the test in Policy Paragraph 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cubcadetpartsdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC, Panelist
Dated: October 14, 2019
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