MTD Products Inc v. Mike Kernea / Skyline
Claim Number: FA1803001775278
Complainant is MTD Products Inc (“Complainant”), represented by Christopher A. Corpus of Corpus Law Inc, Ohio, USA. Respondent is Mike Kernea / Skyline (“Respondent”), represented by Mike Kernea of Skyline, Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cubcadet.equipment>, <troybilt.equipment>, <mtd.equipment>, registered with GoDaddy.com, LLC; and <mtd.parts>, registered with Go China Domains, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 9, 2018; the Forum received payment on March 9, 2018.
On March 12, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cubcadet.equipment>, <troybilt.equipment>, and <mtd.equipment> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. On March 12, 2018, Go China Domains, LLC confirmed by e-mail to the Forum that the <mtd.parts> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC and Go China Domains, LLC have verified that Respondent is bound by the GoDaddy.com, LLC and Go China Domains, LLC registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2018 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@cubcadet.equipment, postmaster@troybilt.equipment, postmaster@mtd.equipment, and postmaster@mtd.parts. Also on March 13, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 a formal response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in MTD, TROY-BILT and CUB CADET and alleges that the disputed domain names are either identical or confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Nonetheless respondent made an out of time response which the Panel has considered as a preliminary matter below.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademarks MTD, TROY-BILT and CUB CADET in connection with its business selling power tools and equipment;
2. the trademarks are registered with the United States Patent and Trademark Office (“USPTO”). The mark MTD is the subject of Reg. No. 1,986,869, registered July 16,1996; TROY-BILT of Reg. No. 850,181, registered June 4, 1968; and CUB CADET of Reg. No. 1,252,738, registered Oct. 4, 1983;
3. the disputed domain names were all created in June 2014 and resolve to a webpage at <skylinepowerequipment.com> which features hyperlinks to third party companies that compete with Complainant’s power equipment business; and
4. there is no commercial agreement between the parties and (in spite of Respondent’s contrary assertion) there is no evidence Complainant has authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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."
As a preliminary matter the Panel considers Respondent’s out of time submissions. Respondent asserts that he “sold parts for MTD, cub cadet, and Troybilt for years on line and on the internet. I was a registered dealer for all these brands. I never used their tradename to damage them in any way. I also sold their whole goods in my store.” He continues that “my building burned and that is why I have not been selling their parts for the past 20 months. I am rebuilding my business to sell parts and equipment.” None of those claims are substantiated and for the reasons which follow the Panel has determined that they are of no influence on the outcome in these Administrative Proceedings.
Turning to the Policy, paragraph 4(a) 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.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. [ii] In this case Complainant provides evidence of its USPTO trademark registration for all three marks at issue. The Panel is therefore satisfied that Complainant has trademark rights.
The Panel finds the disputed domain names to be legally identical to the trademark since in each case the domain name takes the trademark and merely adds a gTLD. The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.[iii]
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information identifies “Mike Kernea” as the domain name registrant in each case. Accordingly, it does not provide any prima facie evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights. The evidence is that the domain names all resolve to an identical webpage at <skylinepowerequipment.com> which features links labeled as “Chain Saws,” “Woods Lawn Mower” and “Power Tools.” The Panel finds that there has been no bona fide offering of goods or services or legitimate noncommercial or fair use of the domain names. The Panel finds that Complainant has made a prima facie case. [v]
The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and are being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(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 who 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, provided that Respondent has engaged in a pattern of such conduct; 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, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 website or location or of a product or service on the site or location.
The Panel finds that Respondent’s conduct falls squarely under paragraph 4(b)(iv) above. The disputed domain names are identical to the trademarks and so confusion is a necessary result of the use of the domain names. The use is most likely for commercial gain by way of referral fees or the like. The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.[vi]
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cubcadet.equipment>, <troybilt.equipment>, <mtd.equipment> and <mtd.parts> domain names domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 19, 2018
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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); 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.”).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) finding that “A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.” ; see also MTD Products Inc. v ICS Inc., FA 1721505 (Forum Apr. 18, 2017) holding that “[t]he removal of the hyphen [from complainant’s TROY-BILT mark in the disputed domain name] is, like most all embedded punctuation, insignificant”); Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
[vi] See, for example, The Dress Barn, Inc. v. Pham Dinh Nhut, FA1503001611220 (Forum May 15, 2015) (“The Panel agrees that Respondent’s inclusion of various hyperlinks; some of which direct Internet users to competing websites of Complainant, some which direct Internet users to Complainant’s own website, and some of which are unrelated to Complainant’s business; evince bad faith attraction for commercial gain.”).
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