MTD Products Inc v. Pete Burgmeier / United American Roofing llc
Claim Number: FA2103001936324
Complainant is MTD Products Inc. (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Pete Burgmeier / United American Roofing llc (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubcadetusa.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2021; the Forum received payment on March 11, 2021.
On March 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cubcadetusa.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 March 16, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2021 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@cubcadetusa.com. Also on March 16, 2021, 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 April 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, is a designer, manufacturer, and seller of outdoor power equipment including lawnmowers, tractors, snow throwers, snow blowers, edgers, and related machines and parts. Complainant has rights to the CUB CADET mark which has been registered with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 1,047,486. Registered on Jul. 12, 1983). See Amend. Compl. Ex. A. The Respondent’s <cubcadetusa.com> domain name is identical or confusingly similar because it incorporates the CUB CADET mark while adding a geographic identifier, “usa”. The “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <cubcadetusa.com> domain name because Respondent is not commonly known by the disputed domain name nor has Respondent been authorized to use Complainant’s CUB CADET mark. Respondent use is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the disputed domain name resolves to a website offering the disputed domain name for sale.
Respondent registered or is using the <cubcadetusa.com> domain name in bad faith because Respondent is offering the disputed domain name for sale in excess of out-of-pocket costs. Respondent further acted in bad faith through its passive holding of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a designer, manufacturer, and seller of outdoor power equipment and parts.
2. Complainant has established its trademark rights to the CUB CADET mark which has been registered with the United States Patent and Trade Office (USPTO) (e.g. Reg. No. 1,047,486. Registered on Jul. 12, 1983).
3. Respondent registered the disputed domain name on February 24, 2021.
4. Respondent has caused the disputed domain name to resolve to a website offering the disputed 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CUB CADET mark through registration with the USPTO. Registration of a mark with the USPTO is sufficient to show that Complainant has rights in that mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence that it has registered its CUB CADET mark with the USPTO (e.g. Reg. No. 1,047,486. Registered on Jul. 12, 1983). See Amend. Compl. Ex. A. With this showing of registration with the USPTO, the Panel finds that Complainant has rights in the CUB CADET mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CUB CADET mark. Complainant argues that the <cubcadetusa.com> domain name is identical or confusingly similar because it wholly incorporates Complainant’s CUB CADET mark and adds the geographic identifier “usa” and the “.com” gTLD. The addition of a geographic term to a domain name using a registered mark does not make the domain name any less confusingly similar. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). Therefore, the Panel finds that the <cubcadetusa.com> domain name is identical or confusingly similar to the trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 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”).
(a) Respondent has chosen to take Complainant’s CUB CADET trademark and to use it in its domain name, adding the geographic identifier, “usa” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on February 24, 2021;
(c) Respondent has caused the disputed domain name to resolve to a website offering the disputed domain name for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <cubcadetusa.com> domain name because Respondent is not commonly known by the disputed domain name nor has Respondent been given any authorization by Complainant to use Complainant’s CUB CADET mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the identifying information lists the registrant as “Pete Burgmeier” and “United American Roofing llc”, and nothing else in the record indicates that the Respondent is known by the disputed domain name. Further, Complainant submits that Respondent has not been authorized to use the CUB CADET mark. Therefore, the Panel finds Respondent is not commonly known by the Disputed Domain Name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent is not making a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <cubcadetusa.com> domain name because it resolves to a webpage that offers the disputed domain name for sale. It is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a domain name to attempt to offer the disputed domain name for sale. See Enterprise Holdings, Inc. v. Huang Jian Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Complainant provides screenshots of the <cubcadetusa.com> domain name’s resolving webpage, that states that the “domain is available for sale!” and asks users to input contact information in order to get a price. See Amend. Compl. Ex. D. Users are also able to go a third party site where they can find that the disputed domain name is for sale for $2,500. See Amend. Compl. Ex. E. Therefore, the Panel finds that Respondent is not making a bona fide offer of goods or services nor a legitimate noncommercial or fair use of a domain name under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <cubcadetusa.com> domain name in bad faith because Respondent is attempting to sell the disputed domain name for above out-of-pocket costs. Attempting to sell a disputed domain name that is for above out-of-pocket costs constitutes bad faith under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, the Panel is reminded of Complainant’s screenshots that show the disputed domain name is being offered for $2,500. See Amend. Compl. Ex. E. Therefore, the Panel finds that the disputed domain name was registered and used in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant further argues that Respondent is inactively holding the <cubcadetusa.com> domain name. Bad faith use may be found where a respondent inactively holds a domain name under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”). Here, the resulting website of the disputed domain name directs users to a website that tells users that the disputed domain name is for sale but does not have any other substantive content associated with it. See Amend. Compl. Ex. D. Therefore, the Panel finds that the disputed domain name was registered and used in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cubcadetusa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 13, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page