national arbitration forum

 

DECISION

 

Clark Equipment Company v. Texas Skid Steer

Claim Number: FA1204001441589

 

PARTIES

Complainant is Clark Equipment Company (“Complainant”), represented by Laura M. Konkel, of Michael Best & Friedrich LLP, Wisconsin, USA.  Respondent is Texas Skid Steer (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <bob-cat.biz> and <texasbobcat.com>, registered with Network Solutions, LLC.

 

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.

 

Jeffrey M. Samuels as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2012; the National Arbitration Forum received payment on April 30, 2012.

 

On April 30, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <bob-cat.biz> and <texasbobcat.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 April 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2012 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@bob-cat.biz and postmaster@texasbobcat.com.  Also on April 30, 2012, 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.

 

A timely Response was received and determined to be complete on May 3, 2012.

 

On May 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a leading global provider of compact equipment for a variety of

applications, including construction, landscaping and agriculture. In 1958, Complainant introduced the first compact loader into the market under its BOBCAT trademark. For more than 50 years, Complainant has manufactured and sold BOBCAT loaders, excavators and backhoes. Complainant also provides parts and services for its BOBCAT goods under the BOBCAT mark, and sells BOBCAT accessories, such as clothing.

 

Complainant owns and uses the domain name <bobcat.com> for a website providing information about Bobcat Company and its BOBCAT equipment. A screen shot of Complainant’s bobcat.com home page is provided at Exhibit D. Complainant also owns and uses many other domain names incorporating its BOBCAT mark, such as <bobcatdealer.com> and <bobcatstore.com>.

 

Complainant has received many awards and much recognition for its BOBCAT equipment. For example, in 2004 the American Society of Agricultural Engineers honored Complainant with the “Historic Landmark” award for inventing the BOBCAT skid steer loader and, in 2009, Farm Innovation News and Roads and Bridges Magazine gave awards to the BOBCAT compact tractor and the BOBCAT skid steer loader. See Exhibit E.  Bobcat Company records are on display at the Smithsonian as an example of an American story of manufacturing, marketing and entrepreneurship.

 

Complainant owns a number of U.S. trademark registrations for the BOBCAT mark, as used for compact equipment such as skid steer loaders, front end loaders, backhoes, trenches and excavators and related equipment, parts, merchandise and services. See Exhibit C.

 

Complainant asserts that the disputed domain names are confusingly similar to Complainant’s BOBCAT mark.  Complainant notes that the domain names incorporate the BOBCAT mark in its entirety and that the addition of the geographically descriptive term “texas” (in the case of <texasbobcat.com>) or of a hyphen (in the case of <bob-cat.biz>) does not distinguish the domain name from the BOBCAT mark.

 

Complainant contends that Respondent does not use the domain names in connection with a bona fide offering of goods or services.  In fact, Complainant indicates, the domain names are not being used at all and Respondent has “no intention of ever using the domains in question.”  See Exhibit H.

 

Upon information and belief, Complainant further asserts that Respondent is not commonly known by the domain names.  “Nor did Complainant consent to Respondent’s use of Complainant’s BOBCAT mark or the Domain Names.”

 

With respect to the issue of “bad faith” registration and use, Complainant maintains that Respondent had both actual and constructive knowledge of Complainant’s rights in the BOBCAT mark when Respondent registered the disputed domain names on May 31, 2006. Complainant notes that it has used the BOBCAT mark since at least as early as 1958, and all of its registrations for the BOBCAT mark were issued well prior to May 31, 2006.  Complainant also notes that an earlier ICANN panel had ordered the transfer of several domain names incorporating the BOBCAT mark from Respondent to Complainant.  See Clark Equipment Co. v. Texas Skid Steer / Westerne Cowboy Art / Bobby Miles, FA 1355961 (Nat. Arb. Forum Dec. 9, 2010) (<usedbobcatforsale.com>, <usedbobcatsforsale.com>, and <bobcatsforsale.net> transferred from Respondent to Complainant).

 

Complainant points out that it offered Respondent $100 for the transfer of the domain names and that Respondent replied that it would “offer them for sell [sic] to the public at $1,000.00 each.”  See Exhibit H.  “Respondent’s willingness to sell the Domain Names only for an amount far in excess of its out-of-pocket expenses is evidence of bad faith registration and use,” Complainant asserts.

 

Complainant also relies on Respondent’s failure to actively use the domain names, as well as its stated intention of never doing so, to buttress its case of bad faith registration and use.

 

Finally, Respondent contends that Respondent is a known cybersquatter that has been subject to other UDRP actions that resulted in transfer of domain names.  In addition to the matter referred to above involving Complainant’s BOBCAT mark, Complainant cites an earlier action brought against Respondent by Caterpillar.  See Caterpillar Inc. v. Bobby Miles d/b/a Western Cowboy Art, FA 1331174 (Nat. Arb. Forum July 23, 2010) (<caterpillarskidsteer.us> transferred).

 

B. Respondent

 

Respondent’s Response states as follows:

 

“The domains in question are not active, and we have no intention of using them at any time in the future that would cause confusion to the public. In fact they are for sale to the public at $1,000.00 each. The complainant made a [sic] offer of $50.00 each, which we rejected. The fact that the complainant has made a monetary offer proves they agree that the domains have value that belong to the current owner, that being said, the only real question is the price. The price is the only dispute. They have already conceded that I have legal rights by making a monetary offer for the domains. There are many who may find use of the domain names who will in no way bring confusion to the public, such as sport teams..........There are no grounds to the complaints. The only thing in question, is the value of the domains, not the rights to ownership.”

 

FINDINGS

The Panel finds that the disputed domain names are identical or confusingly similar to a mark in which Complainant has rights; that Respondent does not have rights or legitimate interests in the domain names; and that the domain names were registered and being used in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that the disputed domain names, <bob-cat.biz> and <texasbobcat.com>, are confusingly similar to the BOBCAT mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun,” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

The Panel further concludes that, as evidenced by its many U.S. trademark registrations and long use of the BOBCAT mark, Complainant has rights in such mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).

 

Rights or Legitimate Interests

 

The Panel holds that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the subject domain names. The evidence indicates that Respondent has made no use of the domain names and has no plans to do so.  There is also no evidence that Respondent is commonly known by the domain names or that it has registered and uses the domain names under authorization from Complainant.

 

The fact that Complainant offered to purchase the subject domain names from Respondent does not demonstrate that Respondent has rights or legitimate interests in the names. Rather, it merely reflects the fact that Respondent is the current owner of the domain names.  But ownership does not equate to rights or legitimate interests.  If it did, no UDRP complainant could ever prevail.

 

Registration and Use in Bad Faith

 

The Panel finds that the subject domain names were registered and are being used in bad faith.

 

The evidence reveals that Respondent has engaged in a pattern of infringing domain name registrations, involving both the instant Complainant and one other party.  Such evidence demonstrates bad faith registration and use on the part of Respondent under Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent’s previous registrations for the <usedbobcatforsale.com>, <usedbobcatsforsale.com>, and <bobatsforsale.com> domain names and the previous UDRP decision transferring such names to Complainant also demonstrate Respondent’s actual knowledge of Complainant and of its BOBCAT mark. This is further evidence of bad faith registration and use. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).[1]

 

The evidence also indicates that Respondent is not making an active use of the disputed domain names.  The failure to make an active use of the disputed domain names demonstrates bad faith registration and use.  See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <bob-cat.biz> and <texasbobcat.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panelist

Dated:  May 14, 2012