Clark Equipment Company v. Domain Admin / HugeDomains.com
Claim Number: FA1508001634156
Complainant is Clark Equipment Company (“Complainant”), represented by Laura M Konkel, of Michael Best & Friedrich LLP, USA. Respondent is Domain Admin / HugeDomains.com (“Respondent”), represented by Megan R. Long, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mybobcat.com>, registered with TurnCommerce, Inc. DBA NameBright.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Jeffrey M. Samuels, Sandra J. Franklin, and Terry F. Peppard, as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 19, 2015; the Forum received payment on August 19, 2015.
On August 20, 2015, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to the Forum that the <mybobcat.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 21, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2015 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@mybobcat.com. Also on August 21, 2015, 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 September 9, 2015.
A timely Additional Submission was received from Complainant on September 14, 2015.
A timely Additional Submission was received from Respondent on September 17, 2015.
On September 21, 2015, pursuant to Respondent's request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, Sandra J. Franklin, and Terry F. Peppard as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Clark Equipment Co. is a leading global provider of compact equipment for construction, landscaping and agriculture. Complainant owns numerous U.S. trademark registrations for the trademark BOBCAT, which it has used in commerce since at least 1958.
Complainant asserts that the disputed domain name, mybobcat.com, is confusingly similar to the BOBCAT mark. It contends that the addition of the term “my” and of the generic top-level domain “.com” to the term “bobcat” in the disputed domain name does not distinguish the domain name from the BOBCAT mark.
Complainant further maintains that Respondent has no rights or legitimate interests in the disputed domain name. Complainant notes that Respondent is a domain name reseller and uses the domain name only to make an offer to sell it for $2,795, which far exceeds Respondent’s out-of-pocket costs. Complainant further alleges that Respondent is not commonly known by the domain name in issue and that Complainant did not consent to Respondent’s use of BOBCAT or of the disputed domain name.
With respect to the requisite “bad faith” registration and use, Complainant indicates that Respondent and its founder have owned the disputed domain name since July 5, 2009 and have listed it for sale since that time for $2,795.
Complainant also asserts that the evidence supports a finding that Respondent registered the domain name primarily for the purpose of disrupting Complainant’s business, arguing that Respondent had actual knowledge of Complainant’s BOBCAT mark when it registered the domain name, given Complainant’s fame and prior use and registration of numerous BOBCAT marks in the U.S.
B. Respondent
Respondent contends that Complainant has failed to prove its rights in the term “my bobcat”. Respondent asserts that Complainant does not have worldwide exclusive rights to the term “mybobcat,” which term is not a unique phrase solely used by Complainant.
Respondent maintains that the term “bobcat” is a generic term that is defined in the dictionary as referring to a particular mammal and that Complainant was well aware of such fact when it chose to use “Bobcat” in connection with its construction business. Respondent notes that there are at least 27 filed and/or registered trademarks for the term “bobcat” throughout the world which are not owned by Complainant, that the term “bobcat” is the 26th most frequently used sport team name, and that a GOOGLE search for “mybobcat" results in thousands of images of the mammal. Based on such evidence, Respondent declares that BOBCAT “is a very generic, indistinctive and vague trademark held by the Complainant.” Respondent further refers to a four question survey which indicated that 89% of those polled stated that a bobcat was an animal and/or big cat.
Respondent contends it has rights or legitimate interests in the disputed domain name. Respondent refers the Panel to its ownership of many domain names similar to the disputed domain name, all of which start with “my” and end in a generic term. Some of these names incorporate the names of other animals, such as myrabbits.com, myleopard.com, myelephants.com and mybaboon.com. Respondent also owns a number of other domain names that also include the term “bobcat,” such as bobcattrail.com., bobcatgames.com, bobcatclub.com, and bobcatprinting.com.
Respondent denies that it registered and is using the domain name in bad faith. It reiterates its contention that Complainant does not have a distinctive mark over the generic term “bobcat,” maintains that it does not engage in outbound sales for its domains, that there has not been any correspondence between the parties, and that it has never attempted to sell, rent, or otherwise transfer the domain name to anyone holding a distinctive mark regarding the term “bobcat,” nor has it tried to rent or otherwise transfer the domain name to any of Complainant’s competitors.
Respondent further asserts that it did not register the disputed domain name primarily for the purpose of disrupting Complainant’s business. Respondent refers to an absence of evidence that it is using the mybobcat.com website to offer links to sites of Complainant’s competitors, is engaging in efforts to confuse Internet users into believing that Respondent’s website is affiliated with Complainant, or is gaining commercially. Respondent points out that the sales page operating on the mybobcat.com site is solely an inbound sales page for HugeDomains.com and directs users only to the page allowing the purchase of the generic domain from Respondent.
Respondent requests the Panel make a finding of reverse domain name hijacking. Respondent maintains that Complainant’s case is “poor” and consists of numerous misrepresentations of prior panel decisions. Respondent claims that Complainant has no legitimate rights to the term “My Bobcat” and has brought the Complaint in bad faith with the obvious intent to steal Respondent’s legitimately owned property and is thus “abusing the UDRP system in order to do so.”
C. Additional Submissions
In its Additional Submission, Complainant contends that its ownership of federal registrations for the BOBCAT mark is “clear evidence” of its rights in the mark and that it is under no obligation under the Policy to establish worldwide exclusive rights to the term mybobcat.com. Complainant further asserts that Respondent’s use of a domain name confusingly similar to the BOBCAT mark for Respondent’s commercial gain is not a legitimate noncommercial or fair use of the domain name and that it is “well established by past panels that registering a domain name that incorporates a registered trademark with the intention of selling the domain name, is evidence of bad faith.”
Finally, Complainant deems Respondent’s claim of reverse domain name hijacking to be “without merit” inasmuch as Complainant has satisfied all elements required under the Policy.
In its Additional Submission, Respondent maintains that just because Complainant owns registrations for the BOBCAT mark does not mean that it has worldwide exclusive rights to every domain that contains the term “bobcat.” Respondent notes that Complainant does not own the trademark “mybobcat” and that Complainant has not shown how “mybobcat” is identical or confusingly similar to the term “bobcat” as it relates to Complainant’s products.
Respondent also points to earlier panel decisions holding that a respondent may establish rights or legitimate interests where the domain name consists of common and generic terms. Respondent asserts that prior panels have held that the sale of domain names consisting of generic terms is a bona fide offering of goods and services under Policy 4(a)(ii).
Respondent further contends that its business essentially consists of the purchase and resale of premium generic domain names and that “an offer to sell generic domain names to the public cannot be considered a bad faith registration.”
FINDINGS
The Panel finds that: (1) the disputed domain name is confusingly similar to a trademark in which Complainant has rights: (2) Respondent has rights or legitimate interests in the disputed domain name; (3) the domain name was not registered and is not being used in bad faith; and (4) Complainant has not engaged in reverse domain name hijacking.
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.
The Panel concludes that the disputed domain name is confusingly similar to the BOBCAT trademark. The domain name incorporates in full the BOBCAT mark. The additions to the BOBCAT mark of the non-distinctive term “my” and of the top-level domain “.com” does not detract from the confusing similarity between the domain name and mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the domain name myniit.com is confusingly similar to NIIT mark.)
Contrary to Respondent’s assertions, the Policy does not require that Complainant establish confusing similarity between the disputed domain name and the term “Bobcat,” as it relates to Complainant’s products; the Policy only requires confusing similarity between the disputed domain name and the term “Bobcat,” itself. Such argument appears to confuse the Policy’s requirement to establish either identity or confusing similarity between the domain name and the mark with a requirement to establish a likelihood of confusion. Consideration of a complainant’s products is relevant with respect to the latter but not with respect to the former.
The Panel further finds that Complainant has rights in the BOBCAT mark. It is well established that ownership of a U.S. registration suffices to demonstrate rights in a mark. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”) The Policy does not impose a requirement that Complainant establish that it has worldwide exclusive rights in the term “mybobcat.com,” only that it establish rights in a mark that is identical or confusingly similar to the disputed domain name.
The fact that Complainant owns numerous U.S. trademark registrations for the BOBCAT mark is supportive of a determination that such term is not generic, for a determination of genericness by the United States Patent and Trademark Office would preclude issuance of a registration. Absent extraordinary circumstances (not present here), it is not the province of a UDRP panel to second guess the informed determination of the USPTO that a term is entitled to federal registration. Complainant holds a registration for the use of BOBCAT in various classes of goods and services, which satisfies Policy ¶4(a)(i).
The Panel concludes that Complainant has not met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name.
As Respondent notes, many UDRP decisions have determined that the sale of domain names containing generic terms constitutes a bona fide offering of goods and services under the Policy. But such a determination is not automatic. In the decision in Allocation Network GmbH v. Gregory, D2000-0016 (WIPO March 24, 2000), referred to by Respondent, the panel indicated that “although the registration and offering for sale of allocation.com as a domain name may constitute a legitimate interest of Respondent in the domain name, this is different if it were shown that allocation.com has been chosen with the intent to profit or otherwise abuse Complainant’s trademark rights.” The panel in that case found in favor of respondent because there was no evidence that respondent, at the time of registration of the domain name, knew or should have known of the existence of the complainant’s registration. And, in Scholastic Inc. v. 366 Publications, D2000-1627 (WIPO Feb. 21, 2001), the three-member panel found Allocation Network inapplicable “where the Complainant’s mark is the subject of long prior, incontestable trademark registrations and has become well-known in the country where Respondent is located.”
In this case, the evidence establishes, on the one hand, that Complainant owns a number of U.S. trademark registrations for the BOBCAT mark and has used such mark since 1958, over 50 years prior to Respondent’s registration of the disputed domain name. It further appears that Respondent is located in the U.S. Thus, it would not be unreasonable for this Panel to conclude that Respondent “knew or should have known” of Complainant’s ownership and use of the BOBCAT mark at the time it registered the disputed domain name.
On the other hand, the evidence indicates that Respondent is a reseller of generic terms found in the dictionary, has registered many domain names that begin with “my” and incorporate the names of animals other than bobcats, has registered other domain names that incorporate the term “bobcat,” and that the mark BOBCAT has been registered by others around the world.
The Panel concludes that, while Respondent was probably aware of Complainant’s BOBCAT mark at the time it registered the disputed domain name, its registration of the disputed domain name was not done with an intent to profit from, or otherwise abuse, Complainant’s trademark rights. Rather, the evidence suggests that Respondent registered the disputed domain name as part of its overall business model to purchase domain names incorporating the term “my” with the names of other animals, as well as domain names that feature the term “bobcat.” In reaching its decision, the Panel notes that Complainant bears the burden of proof on this issue. On the evidence before it, the Panel simply cannot conclude that such burden has been satisfied.
Registration and Use in Bad Faith
Given the Panel’s finding on the issue of “rights or legitimate interests,” the Panel concludes that the disputed domain name was not registered and is not being used in bad faith. See John Fairfax Publ’n Pty Ltd. v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names.) While Respondent is offering the disputed domain name for sale for an amount far in excess of what it cost to obtain and register, that, apparently, is the business model followed by domain name resellers, such as Respondent.
Reverse Domain Name Hijacking
While the Panel concludes that the evidence establishes that Respondent has rights and legitimate interests in the disputed domain name, it cannot find that Complainant has engaged in reverse domain name hijacking. The Panel notes that Complainant prevailed on the issue of rights in a mark confusingly similar to the disputed domain name and that its position on the issue of “rights or legitimate interests” was at least arguable. See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”)
In view of Complainant’s failure to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mybobcat.com> domain name REMAIN WITH Respondent.
Panelists:
Jeffrey M. Samuels (Chair), Sandra J. Franklin, and Terry F. Peppard
Dated: October 2, 2015
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