Ritchie Bros. Auctioneers (Canada) Ltd. v. StarGateway
Claim Number: FA0512000616234
Complainant is Ritchie Bros. Auctioneers (Canada) Ltd. (“Complainant”), represented by Michael F. Fleming of Larkin Hoffman Daly & Lindgren, Ltd., 1500 Wells Fargo Plaza, 7900 Xerxes Avenue South, Minneapolis, MN 55431-1194. Respondent is StarGateway (“Respondent”), 37 Tithe Walk, London, England NW7 2PY, GB.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ritchiebrother.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 28, 2005.
On December 27, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <ritchiebrother.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ritchiebrother.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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." 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 makes the following assertions:
1. Respondent’s <ritchiebrother.com> domain name is confusingly similar to Complainant’s RITCHIE BROS. AUCTIONEERS mark.
2. Respondent does not have any rights or legitimate interests in the <ritchiebrother.com> domain name.
3. Respondent registered and used the <ritchiebrother.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ritchie Bros. Auctioneers (Canada) Ltd., is the
leading auctioneer of industrial equipment in the world. Complainant operates through more than 110
locations around the world and has been in business since 1963. Complainant conducts public auctions of
various pieces of used industrial equipment, including construction,
transportation, mining, forestry, petroleum and agriculture equipment. In 1999, Complainant expanded its business
to the Internet when it began offering Internet auctions at its <rbauction.com>
domain name, in addition to its traditional in-person auctions.
Complainant owns multiple registrations of its RITCHIE BROS.
AUCTIONEERS mark with the United States Patent and Trademark Office (“USPTO”)
(i.e. Reg. No. 2,452,408 issued May 22, 2001, filed February 25, 1999) and the
Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA532,749 issued
September 15, 2000) .
Respondent registered the <ritchiebrother.com> domain name on July 8, 2002. The domain name resolves to a website titled the “Heavy Equipment Portal,” where Respondent offers for sale heavy industrial equipment either as a seller or as a market provider for third parties.
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."
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.”).
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.
Complainant has provided evidence of its registration of the RITCHIE BROS. AUCTIONEERS mark with the USPTO and CIPO. The Panel determines that Complainant has, therefore, established rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <ritchiebrother.com> domain name is
confusingly similar to Complainant’s RITCHIE BROS. AUCTIONEERS mark under
Policy ¶ 4(a)(i). The domain name
differs with the use of the full term “brother,” instead of the abbreviation
“bros.” for the plural “brothers”, and drops the term “auctioneers” from
Complainant’s mark. The Panel
nevertheless finds that Respondent’s <ritchiebrother.com> domain
name contains the dominant features of Complainant’s RITCHIE BROS. AUCTIONEERS
mark. See Nat’l Geographic
Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001)
(finding that the domain name <nationalgeographics.com> was confusingly
similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Am. Eagle
Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005)
(finding the <americaneaglestores.com> domain name to be confusingly
similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); cf. Minn.
State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding
that the <mnlottery.com> domain name is confusingly similar to the
complainant’s MINNESOTA STATE LOTTERY registered mark).
Complainant has established Policy ¶ 4(a)(i).
The initial burden under Policy ¶4(a)(ii) is on Complainant to prove Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds Complainant has presented a prima facie case, and the Panel now considers whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <ritchiebrother.com> domain name. Nothing in the record, including the WHOIS information, suggests otherwise and Respondent has not come forward with any evidence rebutting Complainant’s contentions. Therefore, the Panel concludes that Respondent has failed to establish that it is commonly known by the <ritchiebrother.com> domain name pursuant to Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. 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); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant contends that Respondent is using the <ritchiebrother.com> domain name to operate a commercial website entitled “Heavy Equipment Portal,” where Respondent offers the interactive sale of used heavy industrial equipment. Although it is not clear whether Respondent is the seller of such goods or is creating a market for third-party sellers and buyers, such a business is in direct competition with Complainant’s business in providing similar products and services. Respondent’s use of the confusingly similar domain name in association with providing competing goods and services does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Complainant has established Policy ¶ 4(a)(ii).
Complainant is the world’s leading auctioneer of industrial equipment, and Respondent is using the confusingly similar <ritchiebrother.com> domain name to operate a website that provides a market for heavy industrial equipment, competing with Complainant. The Panel finds that such competing use on the part of Complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent’s use of the <ritchiebrother.com> domain name in association with a website that offers similar products and services to those of Complainant suggests that Respondent is attempting to attract Internet users to its website through a likelihood of confusion. Internet users searching for Complainant’s RITCHIE BROS. AUCTIONEERS products and services may be confused if they reach Respondent’s competing website. Such use of a confusingly similar version of Complainant’s mark to benefit from the goodwill associated with the mark with the intent of attracting Complainant’s customers to Respondent’s website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ritchiebrother.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 6, 2006
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