MTD Products Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2109001963999
Complainant is MTD Products Inc. (“Complainant”), represented by Christopher A. Corpus, Ohio, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cubcadetpars.com>, registered with GoDaddy.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 16, 2021; the Forum received payment on September 16, 2021.
On September 17, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cubcadetpars.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 September 21, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 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@cubcadetpars.com. Also on September 21, 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 October 13, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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., is in the business of design and manufacture of outdoor power equipment. Complainant has rights in the CUB CADET mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,252,738, registered Oct. 4, 1983). Respondent’s <cubcadetpars.com> domain name is confusingly similar to Complainant’s mark because it displays the CUB CADET mark in its entirety, merely adding the term “pars” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <cubcadetpars.com> domain name because Respondent is not authorized or licensed to use Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent merely displays parked links at the disputed domain.
Respondent registered and uses the <cubcadetpars.com> domain name in bad faith. Respondent offers to sell the disputed domain name in excess of out-of-pocket costs. Respondent also demonstrates a pattern of bad faith registration and use through numerous negative UDRP decisions. Finally, Respondent attracts users for commercial gain by displaying commercial hyperlinks at the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <cubcadetpars.com> domain name.
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 CUB CADET mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under 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).”). Complainant provides evidence of registration of the CUB CADET mark with the USPTO (e.g., Reg. No. 1,252,738, registered Oct. 4, 1983). The Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <cubcadetpars.com> domain name is confusingly similar to Complainant’s mark because it displays the CUB CADET mark in its entirety, merely adding the term “pars” and the “.com” gTLD. Addition of generic or descriptive terms and a gTLD does not generally negate confusing similarity between a domain name and the mark it incorporates per 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.”). Complainant contends that the term “pars” is likely a misspelling of the word “parts,” which relates to Complainant’s business. The Panel finds that the disputed domain name is confusingly similar to Complainant’s CUB CADET mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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”). The Panel finds that Complainant has made a prima facie case.
Complainant contends that Respondent does not have rights or legitimate interests in the <cubcadetpars.com> domain name because Respondent is not authorized or licensed to use Complainant’s mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the domain name per Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark may show that the respondent is not commonly known by that name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies the registrant of the disputed domain name as “Carolina Rodrigues/Fundacion Comercio Electronico” and no information indicates that Complainant authorized Respondent to use the mark. This is evidence that Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent doesn’t use the <cubcadetpars.com> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent merely displays parked links at the disputed domain. Use of a disputed domain to display related and/or unrelated pay-per-click links is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Complainant provides a screenshot of Respondent’s resolving webpage, which features a variety of hyperlinks. The Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant claims that Respondent registered and uses the <cubcadetpars.com> domain name in bad faith since Respondent offers to sell the disputed domain name for a price in excess of out-of-pocket costs. Offering a disputed domain name for sale for more than the costs associated with registration and maintenance may suggest bad faith per Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i). ”). Complainant provides a screenshot from a domain name auction site, which lists the disputed domain name for sale without a set price. This is evidence of bad faith per Policy ¶ 4(b)(i).
Complainant also argues that Respondent demonstrates a pattern of bad faith registration and use through numerous negative UDRP decisions. Bad faith may be shown under Policy ¶ 4(b)(ii) where a respondent has established a pattern of bad faith through previous UDRP decisions. See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases). Respondent has been a respondent in many UDRP proceedings where the disputed domain name was transferred to the complainant. This is evidence of bad faith per Policy ¶ 4(b)(ii).
Complainant claims that Respondent attracts users for commercial gain by displaying commercial hyperlinks at the <cubcadetpars.com> domain. Use of a disputed domain to display third-party hyperlinks suggests bad faith attraction for commercial gain per Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). Complainant provides a screenshot of Respondent’s resolving webpage, which features a variety of hyperlinks. This is evidence of find bad faith and the Panel finds that Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cubcadetpars.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
October 22, 2021
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