Deere & Company v. Domains Ventures
Claim Number: FA0603000653329
Complainant is Deere & Company (“Complainant”), represented by Willard L. Boyd, III of Nyemaster, Goode, West, Hansell & O’Brien, P.C., 700 Walnut, Suite 1600, Des Moines, IA 50309-3899. Respondent is Domains Ventures (“Respondent”), 136 Xiaoxue Road, Xiamen, Fujian 361001, China.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <myjdaccount.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 3, 2006; the National Arbitration Forum received a hard copy of the Complaint March 6, 2006.
On March 7, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <myjdaccount.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 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@myjdaccount.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <myjdaccount.com>, is confusingly similar to Complainant’s JOHN DEERE mark.
2. Respondent has no rights to or legitimate interests in the <myjdaccount.com> domain name.
3. Respondent registered and used the <myjdaccount.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is primarily engaged in the business of making and selling agricultural equipment, commercial and consumer equipment for land and grounds care, construction and forestry equipment, and engines and components for its equipment. Complainant registered its JOHN DEERE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 30,580 issued September 21, 1897) in connection with its business. Complainant is also engaged in related businesses such as John Deere Credit, which provides financing for the purchase of its products. Complainant registered the <myjdcaccount.com> domain name on April 24, 2002, for use in connection with its John Deere Credit business.
Respondent registered the <myjdaccount.com> domain name February 16, 2004. Internet users who access this domain name are directed to a website that features tabs labeled with names such as “John Deere,” “John Deere my account” and “Sign in to my John Deere account.” These tabs take Internet users to websites that list numerous links to commercial websites.
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 will draw such inferences as the Panel 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 Complainant to 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 established, using extrinsic proof in this proceeding, that it has legal rights in the JOHN DEERE mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Those registrations include operating “retail sales outlet services.” Complainant also registered the <myjdcaccount.com> domain name and operates a website at that domain name, which it uses for its retail service outlets to permit customers to access the company directly using the website. Customers presumably feel that their account information is secure when using that site.
Respondent registered a domain name that is identical to Complainant’s existing domain name but for the deletion of the letter “c,” which in Complainant’s domain name stands for “credit.” The disputed domain name is confusingly similar to Complainant’s registered mark. See Boehringer Ingelheim Pharmaceuticals, Inc.v. Hofman, FA 162192, (Nat. Arb. Forum July 28, 2003) (finding that the complainant’s rights in the BOEHRINGER-INGELHEIM mark extended to the “bi-pharm” abbreviation); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has legal rights in the JOHN DEERE mark by numerous registrations and by its use of the mark in commerce since 1968. Complainant alleges in this proceeding that Respondent has no such rights and asserts that Respondent “has no connection with Complainant’s businesses or mark, including John Deere Credit and myjdcaccount.com, and has no identifiable mark or other trade name associated with “JD” or “myjdaccount.”
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent came forward with no such proof. This case is one in which Complainant is entitled to protect its rights in the abbreviation of its mark. Instituto Nacional de Capacitacion Profesional v. Ojeda, FA 95163 (Nat. Arb. Forum Aug. 10, 2000) (holding Complainant’s rights in the registered mark "Instituto Nacional de Capacitacion Profesional" extend to the “INACAP” abbreviation).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleged that Respondent acted in bad faith in registering a confusingly similar domain name that infringes upon Complainant’s protected mark. Complainant alleged that Respondent has no authorization to use its mark in any way. Here, Respondent registered the disputed domain name and includes such information as the following, according to Complainant’s proof: “Sign in To My John Deere, Account, My Accounts, John Deere My Account, Balance, Online Payment”… “John Deere Pay Bill,” “Online Payment” and “Transaction History.” Respondent’s use of the domain name with these references to Complainant’s specific business operations and accounts compels recognition that Respondent is knowingly and opportunistically trying to use a confusingly similar domain name, <myjdaccount.com>, to direct those trying to access Complainant’s businesses to a website featuring Complainant’s mark. Respondent’s use of these invitations at the website, “Sign in to my John Deere account” and “John Deere my account,” establish that Respondent is knowingly attempting to confuse these Internet users at these sites as to the sponsorship and association with Complainant. Further, these tabs are virtually identical to tabs on Complainant’s website at the <myjdcaccount.com> domain name, which Complainant uses to allow its customers to manage their credit accounts with its subsidiary business, John Deere Credit. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”); see also HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates).
Respondent is representing to Internet users that it has an association with Complainant without offering any proof that such representations are authorized. This creates a likelihood of confusion and suggests an attempt to attract Internet users to Respondent’s website for Respondent’s commercial gain. The Panel finds that this is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
While the Policy lists four circumstances demonstrating registration and use of a domain name in bad faith, this list merely illustrates possible situations that demonstrate bad faith. The Panel may look to the totality of the circumstances surrounding the registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
The Complainant having satisfied all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
It is accordingly ORDERED that the domain name be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 19, 2006.
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