MTD Products Inc v. Zhi Chao Yang
Claim Number: FA2006001902340
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus, Elysia Ohio. Respondent is Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rtroybilt.com>, registered with Cloud Yuqu 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2020; the Complaint was submitted in both Chinese and English; the Forum received payment on June 30, 2020.
On June 30, 2020, Cloud Yuqu LLC confirmed by e-mail to the Forum that the <rtroybilt.com> domain name is registered with Cloud Yuqu LLC and that Respondent is the current registrant of the name. Cloud Yuqu LLC has verified that Respondent is bound by the Cloud Yuqu 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 July 9, 2020, the Forum served the Complaint and all Annexes, including a Chinese Language Written Notice of the Complaint, setting a deadline of July 29, 2020 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@rtroybilt.com. Also on July 9, 2020, the Chinese 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 August 3, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant designs, manufactures, and distributes outdoor power equipment worldwide. Complainant has rights in the TROY-BILT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 850,181, registered June 4, 1968; Reg. 1,503,610, registered Sept. 13, 1968). Respondent’s <rtroybilt.com> domain name is confusingly similar to Complainant’s mark as it incorporates the mark entirely and only adds a single letter.
Respondent has no rights or legitimate interests in the <rtroybilt.com> domain name. Respondent is not commonly known by this domain name, and Complainant has not authorized or licenses Respondent to use its mark in the disputed domain name. Respondent does not use the mark for any bona fide offerings of goods or services, nor does it engage in any legitimate noncommercial or fair use with the mark. Instead, Respondent profits off of pay-per-click fees by using the domain name to redirect to a website with hyperlinks to competitors and sites unrelated to Complainant.
Respondent registered and uses the <rtroybilt.com> domain name in bad faith. Respondent disrupts Complainant’s business for commercial gain by confusing internet users into visiting the disputed domain name instead of Complainant’s website, and using this confusion to profit off of pay-per-click fees from the hyperlinks on the resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is MTD Products Inc (“Complainant”), of Valley City, OH, USA. Complainant is the owner of the domestic registration for the mark TROY-BILT, and numerous variations thereon constituting the family of TROY-BILT marks. Complainant has continuously used the mark since at least as early as 1967 in connection with its manufacture and sale of outdoor power equipment.
Respondent is Zhi Chao Yang et. al of (“Respondent”), Anhui, China. Respondent’s registrar’s address is listed as the same. The Panel notes that the <rtroybilt.com> domain name was registered on or about May 15, 2020.
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 has rights in the TROY-BILT mark through its multiple registrations with the USPTO. (e.g. Reg. 850,181, registered June 4, 1968; Reg. 1,503,610, registered Sept. 13, 1968). Registration with the USPTO may demonstrate rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds Complainant has established rights to the mark under ¶ Policy 4(a)(i).
Complainant argues that Respondent’s <rtroybilt.com> domain name is confusingly similar to Complainant’s TROY-BILT mark as it merely adds a single letter. The Panel notes the disputed domain name also adds the ".com" gTLD. Domain names that differ from a mark only by the addition of a letter may be confusingly similar to that mark. See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). Furthermore, the addition of a gTLD does not generally differentiate a domain name from the mark it incorporates. See J Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Respondent’s domain name incorporates Complainant’s mark in its entirety, and merely adds the letter “r” to the front of the mark and the “.com” gTLD to the end of the mark. The Panel here finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i)
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <rtroybilt.com> domain name, since Respondent is not commonly known by this domain name, and Complainant has not authorized or licensed Respondent to use its TROY-BILT domain name. Evidence showing a respondent’s name is different from the domain name can demonstrate that Respondent is not commonly known by that name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). A respondent may not be commonly known by a domain name where a complainant has not authorized or licensed the use of its mark to respondent. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The Panel notes the Registrar of the disputed domain name has identified Respondent as “Zhi Chao Yang.” Complainant claims it has not licensed or authorized Respondent to use its mark, and no information in the record indicates otherwise. The Panel here finds that Respondent has no rights or legitimate interests in the <rtroybilt.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <rtroybilt.com> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent generates pay-per-click fees by using the domain to redirect internet users to a website with hyperlinks to websites which compete with or are unrelated to Complainant. Resolving a domain name to a website with competing or unrelated hyperlinks for commercial gain is generally not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)). See also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Complainant provides a screenshot of the disputed domain name’s resolving website, which contains links Complainant contends are competing or unrelated to its business. Complainant argues it is likely Respondent receives pay-per-click fees for every internet user who mistakenly visits this third party site from the disputed domain. The Panel here finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent’s registration and use of the <rtroybilt.com> domain name is in bad faith because it disrupts Complainant’s business for the purpose of Respondent’s commercial gain. Using a disputed domain name confusingly similar to Complainant’s mark likely confuses internet users into believing they are visiting Complainant’s website or an affiliate. Using this likelihood of confusion to generate pay-per-click revenue by hosting links to competitor sites on the resolving website may considered disruption for commercial gain. See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding bad faith under Policy ¶ 4(b)(iii) and (iv) where Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). The Panel again notes that Complainant provided a screenshot of the disputed domain name’s resolving website, which lists multiple links to competitors or unrelated sites, which Complainant argues generates Respondent pay-per-click fees. The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <rtroybilt.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 17, 2020
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