DECISION
Stanley Black & Decker, Inc. v. CY CY
Claim Number: FA2508002172060
PARTIES
Complainant is Stanley Black & Decker, Inc. ("Complainant"), represented by Stacy J. Grossman of Law Office of Stacy J. Grossman PLLC dba SGIP, New York, USA. Respondent is CY CY ("Respondent"), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cubcadetglobal.shop>, <cubcadet-sale.com>, <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com>, and <cubcadet-usasale.com>, registered with Dynadot Inc.
PANEL
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.
Charles A. Kuechenmeister, Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 18, 2025; Forum received payment on August 18, 2025.
On August 19, 2025, Dynadot Inc confirmed by e-mail to Forum that the <cubcadetglobal.shop>, <cubcadet-sale.com>, <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names are registered with Dynadot Inc and that Respondent is the current registrant of the names. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc 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 25, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 15, 2025 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@cubcadetglobal.shop, postmaster@cubcadet-sale.com, postmaster@cubcadetoutletsale.com, postmaster@cubcadeoutletsale.com, postmaster@us-cubcadet.com, and postmaster@cubcadet-usasale.com. Also on August 25, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister as Panelist.
On September 16, 2025 the Panel issued a Request for Additional Submission. Complainant responded with an Additional Submission on September 17, 2025.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response or any other submittal from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Multiple Domain Names
The Complaint relates to six domain names. Paragraph 3(c) of the Rules provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." The information furnished to Forum by the registrar lists the named Respondent as the registrant of all six domain names, gives the same address and telephone number for the registrant of all six domain names and shows that all six domain names were registered with the same registrar. The WHOIS printouts for the domain names (Complaint Exhibit D) show that all six domain names were registered during the month of July 2025. All six domain names are registered to the same person or entity or are under common control and the Panel will proceed as to all of them.
PARTIES' CONTENTIONS
A. Complainant
Complainant produces hand tools, power tools and accessories, including mowers and snow blowers marketed under the CUB CADET mark. It has rights in the CUB CADET mark based upon the registration of that mark with the United States Patent and Trademark Office (USPTO) by MTD Products, Inc., a subsidiary of Complainant. Respondent's <cubcadetglobal.shop>, <cubcadet-sale.com>, <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names are identical or confusingly similar to the CUB CADET mark as they fully incorporate the entire mark, merely adding generic terms.
Respondent has no rights or legitimate interests in the domain names. It is not licensed by Complainant to use its mark, it has not been commonly known by the domain names, and Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because some of the domain names resolve to websites that mimic and impersonate Complainant and purport to offer products advertised as Complainant's.
Respondent registered and uses the domain names in bad faith. It registered them with actual knowledge of Complainant and its mark and is using the domain names to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its websites, where it passes off as and competes with Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Additional Submission Complainant
On September 17, 2025, in response to the Panel's Request, Complainant filed an Additional submission consisting of its SEC Form 10-K.
FINDINGS
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. The Panel accepts that consensus on this and other issues addressed later in this Decision.
The Panel finds as follows with respect to the matters at issue in this proceeding:
Identical and/or Confusingly Similar
The CUB CADET mark was registered to MTD Products, Inc. with the USPTO (Reg. No. 1,252,738 on October 4, 1983 (TSDR printout included in Complaint Exhibit A). MTD Products, Inc.'s registration of the CUB CADET mark establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). Complainant's allegation that MTD Products, Inc. is a subsidiary of Complainant is supported by a copy of the SEC Form 10-K filed with the SEC by Complainant, which lists MTD Products, Inc. as such. This demonstrates a corporate relationship is which is sufficient to consider MTD Products, Inc. and Complainant as essentially the same entity in evaluating Complainant's rights for the purposes of Policy ¶ 4(a)(i). Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA 1840242 (Forum June 3, 2019) ("Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc. . . . As the two Complainants in this case are in fact closely related, being part of the same company structure, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel will therefore treat them together as a single entity in this proceeding."); Guess? IP Holder L.P. and Guess?, Inc. v. New Ventures Services, Corp., FA 1825019 (Forum Feb. 10, 2019) ("Complainant Guess IP Holder is a holding company concerned with Complainant Guess, Inc.'s intellectual property. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity."). MTD Products, Inc. being a subsidiary of Complainant, Complainant has sufficient rights in the domain names to enable it to file and maintain this proceeding.
Respondent's <cubcadetglobal.shop>, <cubcadet-sale.com>, <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names are identical or confusingly similar to the CUB CADET mark. They fully incorporate the mark, merely omitting the space and a letter in one case, and adding hyphens in some cases, generic terms and a generic top level domain (gTLD). These changes do not distinguish the domain names from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) ("Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis."); ULIONA LIMITED v. Ettouil Oualid / Apk4play, FA 1983297 (Forum May 15, 2022) ("Respondent's domain name is confusingly similar to Complainant's SAVEFROM mark. It incorporates the entire mark, merely inserting a hyphen between the words "save" and "from," and adding the ".net" gTLD"), MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name." Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain names.
For the reasons set forth above, the Panel finds that the domain names are identical or confusingly similar to the CUB CADET mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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"). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the domain names because (i) it is not licensed by Complainant to use its mark, (ii) it has not been commonly known by the domain names, and (iii) Respondent is not using the domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because some of the domain names resolve to websites that mimic and impersonate Complainant and purport to offer products advertised as Complainant's. These allegations are addressed as follows:
Complainant states that it has not licensed or authorized Respondent to use its mark. Complainant has specific competence to make this statement, it is unchallenged by any evidence before the Panel and is taken as true. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name); Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").
The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain names. This name bears no resemblance to the domain names. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. 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 Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same); Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the domain names for the purposes of Policy ¶ 4(c)(ii).
The other four domain names point to pages that have no substantive content but only inform the visitor that the site cannot be reached or is not available. There is no evidence that Respondent is making any active use of any of these four domain names but instead it is passively holding them. This is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iv). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) ("both Domain Names resolve to a web site that shows the words, 'Not Found, The requested URL / was not found on this server.' ' Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).").
On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the domain names.
Registration and Use in Bad Faith
Policy ¶ 4(a)(iii) requires Complainant to prove that the domain name has been registered or is being used in bad faith. Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent's web site or location or of a product of service on the respondent 's web site or location.
The concept of bad faith as illustrated in the above four subparagraphs necessarily involves a subjective intent on the part of a respondent knowingly to trade upon the goodwill of the complainant. The respondent must intentionally have targeted the complainant's mark. Such subjective intent would in turn require that the respondent actually knew of the complainant and its rights in the relevant mark when it registered the domain name. Renu Medispa, LLC v Angela Sattler/Aesthetics, FA 2143814 (Forum Apr. 28, 2025) ("A foundational question under ¶ 4(a)(iii) is whether or not Respondent had knowledge of Complainant or its claimed trademark at the time it registered the disputed domain name.").
In attempting to discern actual knowledge and a subjective bad faith intent, panels have looked at many different types of evidence, including but not limited to use of a domain name in direct competition with a trademark owner, impersonation, the parties operating in the same market segment, the parties being physically located in the same general geographic area, a pattern of bad faith conduct, actual prior association between or among the parties, the distinctive or famous nature of the trademark, suggesting that any similarity is not happenstance. Importantly, allegations about a respondent's subjective intention are not evidence in this regard.
The evidence in this case conclusively demonstrates that Respondent had actual knowledge of Complainant when it registered the <cubcadetglobal.shop> and <cubcadet-sale.com> domain names in July 2025 (WHOIS printouts submitted as Complaint Exhibit D show registration dates). Complainant had by then been using the CUB CADET mark at least since the 1981 first use date shown on the TSDR printout included in Complaint Exhibit A. More tellingly, Respondent had to have had actual knowledge of Complainant and its mark in order to impersonate it as blatantly as it has. Respondent had actual knowledge of Complainant when it registered these domain names and selected them with the intent to target this Complainant.
The evidence of Respondent's conduct discussed above in the rights or legitimate interests analysis supports a finding of bad faith registration and use based upon the foregoing grounds articulated in the Policy and upon additional grounds adopted by UDRP panels over the years. First, by passing off as Complainant and offering to sell products advertised as those of Complainant, Respondent is using the confusingly similar <cubcadetglobal.shop> and <cubcadet-sale.com> domain names to attract, for commercial gain, Internet users to its web sites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of those web sites. The evidence does not disclose whether Respondent is actually selling the products advertised on its websites or fraudulently representing that it does, collecting money from the customer and then not delivering the goods. Regardless of which scenario is present here, Respondent's conduct fits squarely within the circumstances described in Policy ¶ 4(b)(iv) and is manifest evidence of bad faith registration and use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) ("The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").
As discussed in the rights and legitimate interests analysis, Respondent is making no active use of the other four domain names but is passively holding them. Passively holding a domain name does not fit within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (Jan. 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passively holding a confusingly similar domain name can be evidence of bad faith registration for the purposes of Policy ¶ 4(a)(iii), Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
The mere fact of passive holding does not automatically result in a finding of bad faith, but Respondent has been shown to have had actual knowledge of Complainant and its mark when it registered the <cubcadetglobal.shop> and <cubcadet-sale.com> domain names, and that knowledge would apply with equal force to its registration of the <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names. Respondent's registration of these four domain names was as much in bad faith as its registration of the other two.
Since the Policy requires a complainant to prove both registration and a continuing use in bad faith, the question next arises whether Respondent's passive holding of the domain name constitutes a continuing use in bad faith. The Policy requirement, "is being used in bad faith," can include passive use. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. 2000-0003 (".. . the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept."). In this case, assuming that Respondent is not responsible for the content on the GoDaddy parking page, there is no evidence that Respondent is holding the domain name under any of the specific circumstances listed in Policy ¶ 4(b), so the question arises whether the facts present in this case support a finding of continuing bad faith use on some other basis.
The Panel has already concluded that Respondent had actual knowledge of Complainant and its rights in the CUB CADET mark when it registered the <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names, and that knowledge certainly continues. Also, Respondent is holding these domain names which are confusingly similar to Complainant's mark, without itself having any legitimate connection with Complainant or its products, which in and of itself has been held to be evidence of bad faith. Google LLC v. Noboru Maruyama / Personal, FA 1879162 (Forum Mar. 3, 2020) ("the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith."). Finally, it is not possible to conceive of a plausible legitimate use of these domain names that would not infringe on Complainant's rights. This evidence persuades the Panel that Respondent's passive holding of the <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names constitutes a continuing use in bad faith within the meaning and for the purposes of Policy ¶ 4(a)(iii).
For the reasons above set forth above, the Panel finds that Respondent registered and is using the domain names in bad faith within the meaning of Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cubcadetglobal.shop>, <cubcadet-sale.com>, <cubcadetoutletsale.com>, <cubcadeoutletsale.com>, <us-cubcadet.com> and <cubcadet-usasale.com> domain names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 17, 2025
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