MTD Products Inc. v. Isaac Goldstein / Domain For Sale Check Afternic.Com
Claim Number: FA2108001958742
Complainant is MTD Products Inc. (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Isaac Goldstein / Domain For Sale Check Afternic.Com (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mtdyardmachines.com> (“Domain Name”), registered with DropCatch.com 624 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2021; the Forum received payment on August 9, 2021.
On August 10, 2021, DropCatch.com 624 LLC confirmed by e-mail to the Forum that the <mtdyardmachines.com> domain name are registered with DropCatch.com 624 LLC and that Respondent is the current registrant of the name. DropCatch.com 624 LLC has verified that Respondent is bound by the DropCatch.com 624 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 August 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@mtdyardmachines.com. Also on August 11, 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 September 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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, MTD Products Inc., operates in the design, manufacture, and sale of outdoor power equipment including lawnmowers, tractors, edge trimmers and other hand-held equipment for yard and general outdoor work. Complainant has rights in the MTD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,026,400, registered Dec. 31, 1996). Respondent’s <mtdyardmachines.com> domain name is confusingly similar to Complainant’s MTD mark since it incorporates Complainant’s mark in its entirety, merely adding the generic words “yard machines” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <mtdyardmachines.com> domain name because Respondent is not commonly known by the Domain Name and is not licensed or authorized to use the MTD mark. 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 Domain Name to spread malware to users while offering the domain name for sale on a third party website.
Respondent registered and uses the <mtdyardmachines.com> domain name in bad faith. Respondent offers the Domain Name for sale at a premium. Respondent has displayed a history of bad faith indicated in previous UDRP decisions. Respondent uses the Domain Name to spread malicious software. Finally, Respondent had actual knowledge of Complainant’s rights in the MTD mark when it registered the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MTD mark. The Domain Name is confusingly similar to Complainant’s MTD mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 asserts rights in the MTD mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,026,400, registered Dec. 31, 1996). Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <mtdyardmachines.com> domain name is confusingly similar to Complainant’s MTD mark because it incorporates Complainant’s mark in its entirety, adding only the descriptive terms “yard machines” and the gTLD “.com.” Addition of generic or descriptive words and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the MTD mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Isaac Goldstein / Domain For Sale Check Afternic.Com” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to commencement resolved to a domain name that spread malware. In addition the Domain Name is for sale at Afternic.com for a sum well in excess of any out-of-pocket costs the Respondent may have incurred in registering the Domain Name, a fact that is advertised by the Respondent name “Domain For Sale Check Afternic.Com” Absent any explanation by Respondent for its conduct, neither the use of a Domain Name to distribute malware nor for resale is a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). See also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time Respondent registered the Domain Name, March 14, 2021, Respondent had actual knowledge of Complainant’s MTD mark which had been in use since 1952. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that wholly incorporates to the MTD mark and words descriptive of Complainant’s products (e.g. yard machines) other than to take advantage of Complainant’s reputation in the MTD Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Respondent has, without alternative explanation (or other legitimate use), acquired a domain name that is confusingly similar to the MTD mark and offered it for sale to the public. An offer to sell a disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence 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).”). In the present case, given the nature of the Domain Name, the manner in which it has been used (to spread malware), and the lack of alternative explanation provided by Respondent, the Panel finds that the Respondent registered and used the Domain Name in bad faith pursuant to Policy ¶ 4(b)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mtdyardmachines.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 7, 2021
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