Clark Equipment Company v. Namase Patel / Mumbai Domains
Claim Number: FA1406001566288
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M. Konkel of Michael Best & Friedrich LLP, Wisconsin, USA. Respondent is Namase Patel / Mumbai Domains (“Respondent”), <<PARTYLOCATION>>.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwbobcat.com>, registered with Moniker Online Services 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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2014; the National Arbitration Forum received payment on June 24, 2014.
On June 24, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <wwwbobcat.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2014 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@wwwbobcat.com. Also on June 25, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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
i. Complainant has been using the BOBCAT trademark in commerce since 1958 in connection with the manufacturing and sale of compact construction, landscaping, and agriculture equipment.
ii. Complainant has a valid trademark registered with the United States Patent and Trademark Office (“USPTO”) for the BOBCAT trademark (Reg. No. 670,566, registered December 2, 1958).
iii. Complainant has a valid trademark registered with the Indian Patent Office (“IPO”) for the BOBCAT trademark (Reg. No. 131,688, registered October 5, 1979).
iv. The disputed domain name is confusingly similar to the trademark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to host pay-per-click advertising for equipment that directly competes with Complainant’s equipment, and Respondent is therefore not using the domain name as a bona fide offering of goods and services or a legitimate noncommercial or fair use.
i. Respondent has shown a pattern of bad faith registration.
ii. Respondent is disrupting the business of Complainant.
iii. Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential customers to products sold by Complainant’s competitors.
B. Respondent
a. Respondent failed to submit a Response in this proceeding.
b. The Panel notes that Respondent registered the disputed domain name on July 9, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant alleges that it has been using the BOBCAT trademark in commerce since 1958 in connection with the manufacturing and sale of compact construction, landscaping, and agriculture equipment. Complainant contends that it has a valid trademark registration with USPTO for the BOBCAT mark (Reg. No. 670,566, registered December 2, 1958), and with the Indian Patent Office (Reg. No. 131,688, registered October 5, 1979). See Complainant’s Exhibit C. The Panel notes that Respondent resides in India, therefore, the Panel finds that Complainant’s registration of the BOBCAT mark with the USPTO and the IPO shows that it has the rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant asserts that the disputed domain name is confusingly similar to the trademark in which Complainant has rights. The Panel notes that the addition of the prefix “www” before Complainant’s BOBCAT mark does not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). The Panel also notes that Respondent’s addition of the generic top-level domain (“gTLD”) “.com” to the BOBCAT mark does not defeat a finding of confusingly similar under Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel finds that the <wwwbobcat.com> domain name is confusingly similar to the BOBCAT mark pursuant to Policy ¶ 4(a)(i).
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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the registrant f the disputed domain name is listed as “Namase Patel”. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) the panel found that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute. At present, the circumstances are comparable because the only evidence available to the Panel is the name listed in the WHOIS information due to Respondent’s default. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name <wwwbobcat.com> under ¶ 4(c)(ii).
Complainant urges that Respondent is using the disputed domain name to host pay-per-click advertising for equipment that directly competes with Complainant’s equipment. The Panel observes that Respondent’s disputed domain name resolves to a webpage featuring links that lead customers to products of Complainant’s competitors. See Complainant’s Exhibit E. The Panel notes that the links include “Gantry Cranes”, “Skid Steer Attachments” and “Construction Asset Manager”. The Panel finds that Respondent is not using the disputed domain name <wwwbobcat.com> 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) as the disputed domain name resolves to a website promoting products in competition with Complainant. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant asserts that Respondent has shown a pattern of bad faith registration. See, e.g., Blue Nile Inc. v. Mumbai Domains c/o Namase Patel, FA 1286707 (Nat. Arb. Forum November 9, 2009) (disputed domains transferred to the complainant); Christian Dior Couture v. Mumbai Domains, Case No. D2010-2274 (WIPO February 3, 2011) (disputed domain name transferred to the complainant). The Panel notes that multiple adverse rulings ordering the transfer of domain names is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Complainant alleges that Respondent is disrupting the business of Complainant through the use of the disputed domain name. Complainant contends that Respondent is linking users to direct competitors of Complainant through the disputed domain name. See Complainant’s Exhibit E. The Panel agrees that Respondent uses the disputed domain name to link consumers to direct competitors of Complainant, and thus the Panel determines that Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent is using the disputed domain name for commercial gain through reliance on confusion or mistake by linking potential customers to products sold by Complainant’s competitors. The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwbobcat.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 30, 2014
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